Appeal 2007-2640
Application 09/933,517
valves were known in the art as a type of valve to restrict flow in only one
direction. The Specification’s description of a check valve as allowing only
upward water flow, without any additional enabling disclosure, indicates that
– consistent with Rolfson’s teachings – check valves were customarily used
in the art to restrict flow of air and water. The modification of Meilahn’s
pump assembly for drawing and discharging water (Meilahn, at col. 4, ll. 18-
35) with a check valve is no more than the addition of a known element for
its expected advantage in controlling water flow (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 127 S. Ct. at 1739,
82 USPQ2d at 1395.
Thus, we affirm the rejections of claims 28 and 29.
Rejection under § 112, first paragraph
Claims 8-29 and 44 stand rejected under § 112, first paragraph, as
lacking written description. The Examiner contends that the Specification as
originally filed fails to provide support for the newly added limitation
“wherein surface[-]seawater and aquatic animals are substantially excluded
from said swimming pool structure” (Answer 7-8).
“The purpose of the written description requirement is to prevent an
applicant from later asserting that he invented that which he did not; the
applicant for a patent is therefore required to ‘recount his invention in such
detail that his future claims can be determined to be encompassed within his
original creation.’” Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d
1313, 1330 [65 USPQ2d 1385] (Fed. Cir. 2003) (citing Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561 [19 USPQ2d 1111] (Fed. Cir. 1991)).
17
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: September 9, 2013