Appeal No. 95-0353
Application 07/837,241
plastic container to obtain ... reduced light transmission ...”
(answer, page 5) he has not presented any objective evidence to
support this conclusion.
Accordingly, for the foregoing reasons, the rejection of
claims 1-6 for obviousness over Bonis is reversed.
Rejection Under 35 U.S.C. § 112
The examiner rejected the claims on appeal under the first
paragraph of 35 U.S.C. § 112 on the ground that the “trademarks
Blue White PE MB and 21249-R11G are inadequate descriptions of
the materials used” (answer, page 3). According to the examiner,
[t]he relationship between a trademark and the
product it identifies is sometimes indefinite,
uncertain and arbitrary. The formula or
characteristics of the product may change from time to
time and yet it may continue to be sold under the same
trademark.
In patent specifications, every element or
ingredient of the product should be set forth in
positive, exact, intelligible language, so that there
will be no uncertainty as to what is meant. Arbitrary
trademarks which are liable to mean different things at
the pleasure of manufacturers do not constitute such
language.
Where the identification of a trademark is
introduced by amendment it must be restricted to the
characteristics of the product known at the time the
application was filed to avoid any question of new
matter [see MPEP 608.01(v)].
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