Appeal 2007-0516
Application 10/438,506
1 internal threads with a diameter different than the diameter of the internal
2 threads of the flange.3
3 Claims 3, 4, and 17-21
4 Each of Claims 3, 4 and 17-21 specifically requires threads having a
5 diameter of 1 ½ and/or 2 inches.
6 The Examiner notes that the original disclosure does not make any
7 reference to diameters of 1 ½ or 2 inches and correctly notes that every
8 reference to the values 1 ½ and 2 inches is in relation to thread pitch. Our
9 review of the original specification confirms the Examiner’s finding. The
10 Examiner has referenced Marks and Webster to establish the ordinary
11 meaning of pitch as the distance between adjacent threads. We think the
12 person skilled in the art would have given the word pitch its ordinary
13 meaning and would not immediately discern the values 1 ½ and 2 inches as
14 relating to diameter. Applicant’s original disclosure did not provide a
15 written description of the limitation. Waldemar, 32 F.3d at 558, 31 UPSQ2d
16 at 1857.4
(B) a drawing as prescribed by section 113 of this title; and
(C) an oath by the applicant as prescribed by section 115 of this title.”
3 In this regard we note that the Examiner has a means to address the
situation where an applicant by amendment changes the fundamental
concept of the invention. See MPEP ¶ 819.
4 We note that the specific 1 ½ inch and 2 inch diameter limitations, as well
as essentially any other useful diameter, are enabled. However, the Federal
Circuit has stated that the written description and enablement requirements
are separate requirements of section 112, ¶ 1. Vas-Cath, 935 F.2d at 1563,
19 USPQ2d 1111 at 1117 (“we hereby reaffirm, that 35 U.S.C. §112, first
paragraph, requires a ‘written description of the invention’ which is separate
and distinct from the enablement requirement.”). Similarly, the 1 ½ inch
and 2 inch diameter limitations would have been obvious from applicant’s
original disclosure. However, possession of the invention is not established
by obviousness from the disclosure. Lockwood v. Am. Airlines, Inc., 107
- 11 -
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: September 9, 2013