IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
APPLICANT JACOB COX
APPLICATION NO. XXXX
ART UNITXXX
FILING DATE XXX
FILER’S NAME JACOB COX
FILER’S ADDRESS Jacob Cox
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SIGNATURE
DATE
IN THE XXX PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Serial No.: ________________
Art Unit: XXX
Applicant: XXXX
APPLICANT’S APPEAL BRIEF
TABLE OF CONTENTS
TABLE OF CONTENTS 3
INDEX OF CITATIONS 4
STATEMENT OF CLAIMED SUBJECT MATTER 5
ARGUMENTS 6
i. Applicant has always been in possession of the claimed invention: The amended
application should therefore be allowed. 6
CONCLUSION 8
CLAIMS APPENDIX 9
EVIDENCE APPENDIX 13
INDEX OF CITATIONS
Cases
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COMES NOW the Applicant, JACOB COX, pro se, and hereby respectfully appeals the
Primary Examiner’s Second Rejection of Applicant’s Claims 1-2.
STATEMENT OF CLAIMED SUBJECT MATTER
Applicant’s first claims 1-2 of US Application No. XXXX (hereinafter “the
application”) was filed on March XXXX
Consequently, Applicant filed new claims 1-2 on September XXX. Applicant filed
drawings regarding the application on or about June XXXX.
On or about September XXXX, the Primary Examiner sent Applicant an office action
rejecting Applicant’s application. For the Drawings, the said examiner based the rejection on the
grounds that the Drawings failed to comply with 37 CFR 1.84(p)(5) because they include
reference characters not mentioned in the description. Notably, the Examiner stated that
reference numerals 4, and 5, shown in fig. 1, were not described in the specifications as amended
in June XXX
Also the Examiner stated that the corrected drawing sheets failed to comply with 37 CFR
1.121(d) because Applicant failed to label the drawing sheets as either “Replacement Sheet” or
“New Sheet”.
The Examiner also rejected the drawings on the ground that the drawings failed to
comply with 37 CFR 1.83(a) because they failed to show every feature of the invention
specified. Therefore, the Examiner stated that the “planks”, “top planks”, “bottom planks”, as
claimed in claims 1-2 must be shown on the feature cancelled from the claims.
For the specification, the Examiner stated that Applicant’s amendment filed on June 23,
2022 was not compliant with 37 CFR 1.32(a) because it introduces new matter into the
disclosure. Notably, the Examiner cited the following as new matter: the newly introduced film
tape”, “copper tape”, including the introduction of “positive film tape” and a “negative film
tape”, that the extender has a “top extender” and “bottom extender”, and that the grapheme is
newly “on the adhesive tape”. The Examiner also finds issue at amended paragraph [0009],
which the new items “tape” to an “underside of the planks”.
For Claims 1 and 2, the Examiner stated that he claims were rejected under 35 USC
112(a) or 35 USC 112(pre-AIA), for failing to comply with the written description requirement.
The Examiner noted that the claims contain subject matter that was not described in the
specification, to convey the understanding that the inventor had possession of the invention at the
time of the application.
Consequently, on or about October XXX, Applicant filed a response to the said Office
action. However, since the Examiner’s official action was deemed final, Applicant files this
Appeal Brief.
ARGUMENTS
i. Applicant has always been in possession of the claimed invention: The amended
application should therefore be allowed.
The written description requirement of 35 U.S.C. § 112 requires the application to
"convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or
she was in possession of the invention." See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991); see also In re Wright, 866 F.2d 422, 424 (Fed. Cir. 1989) ("When the scope of a
claim has been changed by amendment in such a way as to justify an assertion that it is directed
to a different invention than was the original claim, it is proper to inquire whether the newly
claimed subject matter was described in the patent application when filed as the invention of the
applicant. That is the essence of the so-called `description requirement’ of § 112, first
paragraph… ").
The foregoing notwithstanding, the claimed subject matter need not be described "in haec
verba" in the original specification in order to satisfy the written description requirement. In re
Wright, 866 F.2d at 425. Rather, "the test . . . is whether a person of ordinary skill in the art
would recognize that the applicant possessed what is claimed in the later filed application as of
the filing date of the earlier filed application." See Noelle v. Lederman, 355 F.3d 1343, 1348
(Fed. Cir. 2004). The same standards govern whether new matter has been added to the
specification. See Turbocare Div. of Demag Delaval v. G.E, 264 F.3d 1118 (Fed. Cir. 2001).
Accordingly, in order for a disclosure to be inherent, "the missing descriptive matter must
necessarily be present in the [original] application’s specification such that one skilled in the art
would recognize such a disclosure." Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159, 47 USPQ2d
1829, 1834 (Fed. Cir. 1998).
In the instant action, it is Applicant’s assertion that he possessed the invention from the
time he first filed the Application thereof. Notably, the amendment that Applicant filed on
October 20, 2022 in reply to the Examiner’s office action, shows that the Applicant was in
possession of the invention at the time of the initial Application. In the reply, the Applicant
submitted an amendment that would be compliant with the law. Applicant therefore amended the
specification to comply with 35 USC 132(a) such that the description thereof is apparent and
understandable. Next, Applicant amended the drawing by submitting a replacement sheet of Fig.
1, removing 20 of figure 1, changing the exploded view of 4 and 5 to Fig. 4 and Fig 5 as per the
interview with the examiner, and adding Numerals 26 and 29 of figure 1. Lastly, for the claims,
the Applicant amended Claims 1 and cancelled Claim 2 to comply with the alleged non-
compliance with 35 USC 112(b). It is also notable that Applicant added no new matter in the
amendment.
The amendment is therefore specific and can only mean that Applicant is the inventor,
and that the application should be granted.
CONCLUSION
The Examiner’s decision should therefore be revised since Applicant has shown, through
his latest amendment, that he possessed the invention at the time he filed the initial application.
Applicant therefore prays this Honorable Board revise the Examiner’s decision issued on
September XXX, accept the Applicant’s amendment as duly filed and compliant with all
applicable law, and grant Applicant’s application based on the said amendment. Applicant
further prays for any other favorable decision this Board deems just.
_____________________XXX
CLAIMS APPENDIX
EVIDENCE APPENDIX
1. Examiner’s Office Action- September XXX
2. Applicant’s Reply to Office Action
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