Appeal 2007-1266
Application 10/125,204
constructed from metals typically used for sample mounting presses such as
stainless steel and aluminum alloys and forms a leak-free seal under a
pressure of about 3000 psi. (See Findings of Fact 1-3). Accordingly, we
reverse the rejection of claims 1-5, 8-16, and 18-19 under 35 U.S.C. § 112,
second paragraph, as indefinite.
II. Have Appellants shown that one of ordinary skill in the art would
have understood from the Specification that Appellants were in possession
of a metallographic sample mounting press comprising a rigid face seal
assembly as now claimed?
The Examiner contends that the appealed claims do not comply with
the written description requirement of 35 U.S.C. § 112, first paragraph,
because “a rigid face seal” has not been described in the Specification.
(Answer 3). The written description requirement of 35 U.S.C. § 112, first
paragraph, requires the applicant to convey to those skilled in the art that, as
of the filing date sought, he or she was in possession of the invention now
claimed. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991). “[T]he claimed subject matter need not be
described in haec verba in the specification in order for that specification to
satisfy the description requirement.” In re Wright, 866 F.2d 422, 425, 9
USPQ2d 1649, 1651 (Fed. Cir. 1989).
We are in agreement with Appellants that the aforementioned portions
of the Specification (i.e., Findings of Fact 1-3) reasonably convey to one of
ordinary skill in the art that, at the time the application was filed, Appellants
were in possession of a metallographic sample mounting press comprising a
rigid face seal assembly as now claimed. Accordingly, we reverse the
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013