Appeal 2007-1558
Application 10/635,362
ANALYSIS
REJECTION OF CLAIM 12 UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
Claim 12, directed to a method of storing handwritten writings, requires that
the “writings comprise a carving, wood burning, etching, brush marks, imprint or
stamp” (Finding of Fact 1). The Examiner held that “it is unclear how carving,
wood burning, etching, brush marks, imprints and stamps can be considered
handwritten writings” (Answer 3). Appellant argues that “[i]n carving, wood
burning, etching, etc. a human uses an instrument, such as a knife, wood burner,
etc., to produce writing” thereby producing a handwritten writing “in the same
sense as if the writer were holding a pen or pencil” (Appeal Br. 5). We agree with
Appellant.
The term handwritten is commonly defined as something written by hand
(Finding of Fact 4). Appellant’s specification does not provide any special
meaning to the term handwritten nor does it use the term contrary to its customary
meaning (Finding of Fact 5). Appellant’s specification describes that writings may
be made using any one of: “pencil, pen, marker, paintbrush, woodburning tool,
carving tool, etching tool, brush, imprint, stamp, etc.” (Finding of Fact 3).
Accordingly, when claim 12 is read in light of the specification, one skilled in the
art would understand that the term “handwritten” to be any mark which is created
by use of one of the listed hand tools clearly defined in claim 12. As such, we do
not sustain the Examiner’s rejection of claim 12 under 35 U.S.C. § 112, second
paragraph.
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