Appeal 2007-1856
Application 10/808,652
Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007); Graham v.
John Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 465-66 (1966).
ANALYSIS
We affirm the rejection of claim 1 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. We also affirm the
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over
Gerondale in view of Baudin.
The 35 U.S.C. § 112, First Paragraph, Rejection
We determine whether the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 112, first paragraph was proper by reviewing the Specification as originally filed.
Appellants argue that the claimed subject matter “directed to concave and
convex surfaces [are] …clearly set forth in the drawings which also show that the
surfaces have equal radii” (Appeal Br. 4-5). We disagree.
The original drawings do not display with reasonable clarity: (1) a concave
surface which subtends the aperture 38, or (2) that concave and convex surfaces on
the tip and the cap have equal radii (FF 4, 6). Further, the drawings as originally
filed show in Figures 1 and 3 that the aperture 38 in the neck 18 is defined by a
surface, but the shape of that surface cannot be ascertained (FF 6).
Second, even if it could be gleaned from the drawings that the surface
subtending the aperture 38 is concave, there is nothing in the Specification as
originally filed describing that the concave and convex surfaces of the aperture and
6
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