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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