Appeal No. 2000-0873
Application No. 08/975,983
arguments are inappropriate and will not be considered because
the examiner is not relying on this patent in rejecting the
appealed claims. See page 9 of the answer.
Rejection (a)
The rejection of claims 44-48, 55-63, 69-72 under the
first paragraph of 35 U.S.C. § 112 is founded on the
examiner’s reading of these claims as requiring that the
tangible medium that specifies the amounts of paint needed for
each paint is a medium that is separate and distinct from the
color/shading matching card. According to the examiner (final
rejection, page 3), the
original disclosure does not describe such a separate tangible
medium for the amounts of paint needed.
With respect to the description requirement found in the
first paragraph of 35 U.S.C. § 112, the test for determining
compliance therewith “is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
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