Wednesday, March 13, 2013

112 issues in Ex parte Lin

from within Ex parte Lin

-->As to a rejection for lack of written description:

The factual inquiry for determining whether a Specification provides sufficient written

description for the claimed invention is whether the specification conveys with

reasonable clarity to those skilled in the art that, as of the filing date

sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc.

v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). An

applicant shows possession of the claimed invention by describing the

claimed invention with all of its limitations using such descriptive means as

words, structures, figures, diagrams, and formulas that fully set forth the

claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565,

1572 (Fed. Cir. 1997).


Where the Specification and drawings do not clearly and conclusively

disclose claimed subject matter that Appellant seeks to enter by amendment,

and the Specification is completely silent in this respect, the Examiner is

justified in rejecting the claim under 35 U.S.C. § 112, first paragraph. See,

e.g., In re Olson, 212 F.2d 590 (CCPA 1954) (affirming a rejection based on

improperly inserting the limitation “equally spaced”). Thus, we sustain the

Examiner’s rejection of independent claim 1 under 35 U.S.C. § 112, first


***As to indefiniteness

Because the Specification fails to disclose this

feature such that one of ordinary skill in the art could determine the scope of

the claims, we reject claims 1-20 under 35 U.S.C. § 112, second paragraph,

as being indefinite.

Because claims 1-20 are rejected under 35 U.S.C. § 112, second paragraph as being indefinite,

in comparing the subject matter of claims 1-20

with the applied prior art, it is apparent to us that considerable speculations

and assumptions are necessary in order to determine what in fact is being



Post a Comment

<< Home