Ex parte DARR et al. - Page 5




          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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