Appeal 2007-1463 Page 10
Application 10/083,492
USPQ2d 1649 (Fed. Cir 1989), was whether the process claimed with the words
“not permanently fixed” was described in the specification. While those words
were not literally recited in the Specification, the process described therein clearly
accomplished that result, and thus the court found the claimed process to be
described. The situation before us is different. There is nothing in the
Specification that would lead one to the conclusion that a second plate existed
which Appellants have necessarily omitted from the final retaining assembly. The
other decisions Appellants cite (see Br. 8-11) repeat the axiom that the subject
matter of a claim need not be described literally in order for the disclosure to
satisfy the description requirement. They do not support the general proposition
Appellants appear to be advocating that a Specification’s silence as to an element
is a license to later amend the claim to describe the invention in terms of the
element’s absence.
E. Conclusion of Law
On the record before us, Appellants have failed to show that the Examiner
erred in rejecting claims 35-37 over the prior art but have shown that the Examiner
erred in rejecting claims 38, 40, and 41.
Second and sixth paragraphs of 35 U.S.C. §112
Because Appellants argue claims 6, 38, and 41 as a group, pursuant to the
rules, the Board selects representative claim 6 to decide the appeal with respect to
this rejection, and claims 38 and 41 will stand or fall with claim 6. 37 C.F.R.
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