Appeal 2007-0516
Application 10/438,506
1 us to any evidence demonstrating how one skilled in the art would have
2 understood the original disclosure relating to “pitch” and “diameter.”
3 Applicant, for example, has not submitted declaration evidence explaining
4 how one skilled in the art would understand applicant’s original disclosure. 5
5 Cf. In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1584 (Fed. Cir.
6 1996). On the other hand, the Examiner has referred to extrinsic evidence
7 which shows that “pitch” is a term used in the art and has an accepted
8 meaning. Applicant has responded only with attorney argument. Counsel's
9 argument can not take the place of evidence lacking in the record. Estee
10 Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595, 44 USPQ2d 1610, 1615
11 (Fed. Cir. 1997); In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230
12 (CCPA 1978).
13 The Examiner has established, prima facie, that the change of “pitch”
14 to “diameter,” where associated with the specific values 1 ½ and 2 inches,
15 introduced new matter into the disclosure. The subject matter of Claims 3, 4
16 and 17-21 are not supported by the original disclosure. The rejection of
17 Claims 3, 4 and 17-21 under 35 U.S.C. § 112, ¶ 1, is affirmed.
18 Conclusions of Law
19 Claims 1, 5-16 and 22-23 have not been shown to be unpatentable
20 under 35 U.S.C. § 112, ¶ 1.
21 Claims 3, 4, and 17-21 are unpatentable under 35 U.S.C. § 112, ¶ 1, as
22 not supported by the original disclosure.
5 Our reference to the lack of declaration evidence is not an invitation to5
submit additional evidence as part of any request for reconsideration or
when this application returns to the jurisdiction of the Commissioner of
Patents. Any such evidence should have been submitted during the previous
prosecution before the Examiner.
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