Appeal No. 1997-0221
Application 08/248,496
follow. We also remand this application to the examiner for
appropriate action as noted below.
OPINION
A. The Rejection under § 112, ¶1
The examiner states that “[i]n claims 3 and 4, it is not
clear if there is support for the limitation that there is
less than 1% of each of the specified minerals.” (Answer,
page 4). The examiner further states that it is “ambiguous”
as to whether the total of all elements listed in these claims
is less than 1% or if each element is present in an amount
less than 1% (id.). The examiner also questions the support
for the amendments to claim 5 (id.).
Appellant argues that the examiner admits that the
specification appears to support either interpretation of the
amounts of minerals, and thus there is support for the subject
matter of claims 3-6 (Reply Brief, page 1).
We presume that the examiner’s rejection for “fails to
provide support” is premised on the “written description of
the invention” requirement of the first paragraph of 35 U.S.C.
§ 112. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19
4
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