Ex parte BLISH - Page 6




                 Appeal No. 96-1904                                                                                                                     
                 Application 08/164,854                                                                                                                 



                 teachings,  and the respective viewpoints of appellant and the6                                                                                                                    
                 examiner.  As a consequence of our review, we make the                                                                                 
                 determinations which follow.                                                                                                           


                             The rejection under 35 U.S.C. § 112, first paragraph                                                                       
                                   We affirm the rejection of claims 1 and 3 through 8.                                                                 


                                   This rejection, focusing upon the lack of support in                                                                 
                 the original disclosure for language added to claim 1 (Paper                                                                           


                 No. 3), clearly addresses the description requirement of                                                                               
                 35 U.S.C. § 112, first paragraph.                                                                                                      




                          5(...continued)                                                                                                               
                 in parent claims 11, 14, and 17, respectively.                                                                                         
                          6In our evaluation of the applied teachings, we have                                                                          
                 considered all of the disclosure of each teaching for what it                                                                          
                 would have fairly taught one of ordinary skill in the art.                                                                             
                 See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA                                                                              
                 1966). Additionally, this panel of the board has taken into                                                                            
                 account   not only the specific teachings, but also the                                                                                
                 inferences which one skilled in the art would reasonably have                                                                          
                 been expected to draw from the disclosure.  See In re Preda,                                                                           
                 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).                                                                                      
                                                                           6                                                                            





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007