Appeal No. 94-3399
Application 07/871,374
(Fed. Cir. 1996) citing In re Wertheim, 541 F.2d at 264, 191
USPQ at 98.
The examiner rejected claims 1 through 12 under 35 U.S.C.
§ 112, first paragraph, as lacking descriptive support for the
invention now claimed in the original disclosure. The
examiner stated that "the limitations added to the claims by
the amendment of February 5, 1993 are not supported by the
specification." See Answer, page 2. The limitations referred
to were added to claims 1, 2, 4, 6 and 8 through 12. See the
amendment dated February 5, 1993, Paper No. 3. The examiner,
however, did not discuss all "the limitations added to the
claims by the amendment". See the entire Answer. Rather, the
examiner discussed only two specific claim limitations added
in claims 1 and 2 in the "Ground of [R]ejection" section of
the Answer (see pages 2 and 3) and certain other limitations
in the" Response to [A]rgument" section of the Answer (see
pages 5 through 7). We will address the limitations added in
claims 1 and 3 through 12 separately from the limitations
added in claim 2.
The examiner initially stated that:
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