Appeal No. 96-1766
Application 08/218,822
referred to by the examiner in the supplemental answer.
Absent such specific identification, not only does the
appellant not have an opportunity to contradict the
representations, there is nothing sufficiently specific to
contradict in a meaningful manner. On this record, there is
insufficient support for the examiner’s finding. Accordingly,
we do not sustain the obviousness rejection of claims 1, 3, 4,
and 7-10 as being unpatentable over "a well known photographic
technique in view of the acknowledged prior art."
The § 112, First ¶ Rejection
According to the examiner (answer at 7), the
specification "does not provide support for the claim
limitation of ’said cartoon character whose form is unrelated
to the appearance of the actor.’" It is not clear whether the
examiner is referring to the enabling disclosure requirement
or the written description requirement of 35 U.S.C. § 112,
first paragraph. The two requirements are distinct from each
other. This lack of specificity is itself sufficient basis
for reversing the rejection. In any event, in our view the
specification is neither unenabling nor without written
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