Ex parte PARADA - Page 8




          Appeal No. 97-1025                                                          
          Application No. 08/183,571                                                  


          of said control pads" as recited in claim 1; and (3) "said                  
          control pads do not project beyond said gripping surface" as                
          recited in claims 1 and 23.                                                 


               The appellant's argument (brief, pp. 23-25) regarding item             
          (1) is not convincing.  The appellant is correct that the                   
          original specification (p. 4) states that the cavities 30 may be            
          of any conventional shape: rectangular, round, oval, etc. and               
          that those various shapes are shown in the drawings.  However,              
          our review of the originally filed disclosure fails to find any             
          support for the predetermined shapes identifying corresponding              
          control means.  That is, the originally filed disclosure would              
          not have reasonably conveyed to an artisan that the shape of the            
          recess identified the device being controlled by the control pad.           
          Accordingly, we sustain the rejection of claim 22, and its                  
          dependent claim 24, under 35 U.S.C.  112, first paragraph.                 


               For the reasons set forth in the appellant's brief (pp. 10-            
          23), it is our opinion that items (2) and (3) above are supported           
          by the originally filed disclosure.  Accordingly, we do not                 
          sustain the rejection of claims 1, 2, 5, 12 to 15, 21, 23, 25 to            
          29 and 37 under 35 U.S.C.  112, first paragraph.                           

                                          8                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007