Ex parte UMEZAWA et al. - Page 7




          Appeal No. 95-4588                                                          
          Application 08/127,123                                                      



                    Based on the foregoing, the decision of the examiner              
          rejecting claims 3 through 5, 8 through 10, 12 through 14 and               
          16 under 35 U.S.C.  103 is reversed.                                       


                    Under the provisions of 37 CFR  1.196(b), we enter               
          the following new ground of rejection against the appealed                  
          claims:                                                                     


                    Claims 3 through 5, 8 through 10, 12 through 14 and               
          16 are rejected under 35 U.S.C.  112, first paragraph, as                  
          being drawn to subject matter that does not find support in                 
          the originally filed disclosure, i.e., as lacking a written                 
          description.                                                                


                    In particular, we note that the requirement in each               
          of independent claims 10 and 16 that the cavities recited in                
          the claims be "sealed from an external oil source during                    
          operation" finds no support in the originally filed                         
          disclosure.  This limitation was first added to the claims in               
          the amendment filed December 28, 1992 (Paper No. 26).  As is                

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