Appeal No. 1999-0434
Application No. 08/664,257
the same reasons that we have concluded that the references fail to establish prima facie
obviousness of claim 36, we also conclude that the references fail to establish
obviousness of claim 51.
We therefore cannot sustain the rejection of independent claim 30, 31, 36, or 51.
The references applied against dependent claims in addition to Odhner, Schwarcz, and
Dougherty -- namely, Mitacek and Stine -- fail to remedy the deficiencies we find in the
rejections applied against the independent claims. Accordingly, we cannot sustain any of
the section 103 rejections applied against claims 3-15, 17, 18, and 30-54.
New Ground of Rejection -- 37 CFR 1.196(b)
We enter the following new ground of rejection against the claims in accordance
with 37 CFR § 1.196(b): claims 3-15, 17, 18, and 30-35 are rejected under 35 U.S.C.
§ 112, first paragraph, as the disclosure fails to provide a written description for the
invention now claimed.
To comply with the written description requirement of 35 U.S.C. § 112, first
paragraph, an applicant must 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. The invention is,
for purposes of the "written description" inquiry, whatever is now claimed. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
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