Appeal No. 2005-2686
Application No. 09/879,823
Unfortunately, the Board in the related appeal relied on the same
portions of Von Kohorn cited by the examiner that were found to
be deficient. A subsequent review of Von Kohorn finds that Von
Kohorn supports the rejection for reasons noted in the original
decision in this case and for reasons discussed above.
Appellants argue that the Board has inconsistently
interpreted the phrase “predetermined number of times” for
purposes of finding anticipation under 35 U.S.C. § 102(b) and
lack of written description under 35 U.S.C. § 112. Appellants
assert that the Board failed to point to any express disclosure
in Von Kohorn of limiting use of a coupon to a “predetermined
number of times” [request, pages 18-20].
First, it is noted that the standards for support of a
claimed invention under the first paragraph of 35 U.S.C. § 112
and for disclosure of the invention by the prior art are not the
same. As was discussed in the original decision, appellants’
specification does not provide support for the breadth of the
phrase “predetermined number of times,” but the phrase is met by
the number one. Since the printed coupons in Von Kohorn can only
be redeemed one time, Von Kohorn discloses the invention when
given its broadest interpretation which is also consistent with
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