Appeal No. 96-0885
Application 08/108,932
The only motivation for the examiner’s combination of the
teachings of the references appears to have come from
appellant’s specification, which is improper. See W.L. Gore &
Associates v. Garlock, Inc., 721 F.2d at 1553, 220 USPQ at
312-13; Rothermel, 276 F.2d at 396, 125 USPQ at 331.
Accordingly, the rejection under 35 U.S.C. § 103 over
Mercenari in view of Humphrey is reversed.
DECISION
The rejections of claims 1-3, 5-9 and 11-21 under 35
U.S.C. § 112, first paragraph, on the ground that the
specification fails to provide an adequate written description
and an enabling disclosure of the claimed invention, claims 1,
5, 6, 8, 12, 17 and 19-21 under 35 U.S.C. § 102(b) as being
anticipated by Robinson, and the rejections under 35 U.S.C.
§ 103 of claims 7, 9, 13, 14, 18, 20 and 21 over Robinson,
claims 11, 19 and 21 over Robinson in view of Humphrey, claims
15 and 16 over Robinson in view of Humphrey and JP ‘146, and
claims 1-3, 5-9 and 11-21 over Mercenari in view of Humphrey,
are reversed.
REVERSED
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