Appeal No. 96-2941
Application 07/903,353
Appealed claims 1-12, 14, 17-23, 25, 32, 41-43, 45, 46, 48,
49 and 51-55 stand rejected under 35 U.S.C. § 112, first
paragraph.3
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner’s
rejection.
The examiner states at page 3 of the Answer that the
appealed claims stand rejected under 35 U.S.C. § 112, first
paragraph, “as the disclosure is enabling only for claims limited
to one in which the upper magnetic layer is 2.0 micro or lower
and the content of carbon black in the upper layer is 0.1-10
parts and the content of carbon black in the lower layer is
1.0-20 parts.” As pointed out by appellants, the features of the
invention referred to by the examiner are, in fact, recited in
the appealed claims. Acknowledging this, the examiner states at
page 4 of the Answer that “[a]ppellants amended to put back the
limitation for the upper magnetic layer but not for the lower
magnetic layer.” Thus, it is the examiner’s position that the
present specification does not enable recording mediums within
3Although the examiner’s statement of the rejection at
page 3 of the Answer includes claims 35 and 40, the examiner
acknowledges in the paragraph bridging pages 3 and 4 of the
Answer that the inclusion of claims 35 and 40 in the statement of
the rejection is “an inadvertent oversight.” Claims 35 and 40
are objected to by the examiner.
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