Appeal 2007-2138
Application 10/645,885
Under 35 U.S.C. § 103 (a): claims 1, 3, 4, 13-15, 17, and 19-22 are
rejected as being unpatentable over Suskind2 in view of Bouchette;3 claims
7-9, 12, 16, and 18 are rejected over these references and further in view
of Wagner; and claims 10 and 11 are rejected over the aforementioned
references and further in view of Bergquist.
We cannot sustain any of these rejections.
THE § 112, FIRST PARAGRAPH, REJECTION
The Examiner believes the here rejected claims offend the written
description requirement because "the Specification provides support for
polypropylene fibers and not for 'synthetic fibers' [as recited by independent
claims 1 and 7]" (Ans. 3). We do not agree.
The test for written description compliance is whether the original
specification disclosure conveys with reasonable clarity to those skilled in
the art that an applicant, as of the filing date sought, was in possession of
the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562
(Fed. Cir. 1991).
2 In discussing the obviousness rejections, both the Appellants and the
Examiner refer to the disclosure in US Patent 4,808,467 to Suskind (i.e.,
rather than EP 0308320 to Suskind). We shall do likewise.
3 In the paragraph bridging pages 10 and 11 of the Answer, the Examiner
relies upon a nonapplied reference (i.e., U.S. Patent 6, 428,799) as evidence
supporting an obviousness conclusion regarding the Air Permeability feature
of the independent claims. The Examiner's reliance on this nonapplied
reference is entirely inappropriate. See In re Hoch, 428 F.2d 1341, 1342 n.3
(CCPA 1970). Also see the Manual of Patenting Examining Procedure
(MPEP) § 706.02(j)(Rev. 5, Aug. 2006). Therefore, we have not considered
this nonapplied reference in assessing the issue of obviousness raised by this
appeal.
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