Appeal No. 97-2418 Page 5
Application No. 08/390,843
We will not sustain the rejection of claims 1 through 3
under 35 U.S.C. § 112, second paragraph, as failing to set
forth the subject matter which the appellants regard as their
invention.
The examiner determined (answer, pp. 3-4) that a
statement made by the appellants in the brief was evidence
that claims 1 through 3 fail to correspond in scope with what
the appellants regard as the invention. We do not agree. The
mere fact that the appellants utilized different language in
their brief (see the summary of the invention on page 2 of the
brief) to describe the invention than the language utilized in
the claims under appeal is insufficient to establish that the
claims under appeal fail to set forth the subject matter which
the appellants regard as their invention. Accordingly, the
decision of the examiner to reject claims 1 through 3 under 35
U.S.C. § 112, second paragraph, is reversed.
The 35 U.S.C. § 102(b) Rejection
We sustain the rejection of claims 1 through 3 under
35 U.S.C. § 102(b) as being anticipated by Bachmann.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007