Appeal No. 96-1619
Application 08/263,015
result which does not state/claim what
type of or how the material is
designed for performing the result
[answer, page 3].
Appellant did not specifically respond to this rejection in
the original brief, but appellant did respond in the reply
brief which was entered by the examiner [Paper #31].
Appellant responds that the examiner has admitted that only
routine experimentation would be needed to achieve the claimed
properties, and the language in the claim is complementary to
the narrow thickness range recited in the claims [reply brief,
page 2].
Although appellant’s reference to routine
experimentation may seem misplaced in responding to a
rejection under the second paragraph of 35 U.S.C. § 112, it is
appropriate here because the last portion of the rejection
quoted above seems to question whether the material has been
adequately disclosed. To the extent that the examiner’s
rejection may be viewed as a challenge to the sufficiency of
the disclosure, we conclude that the examiner has presented no
evidence or analysis in support of this contention.
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