Appeal No. 94-3255
Application 07/673,264
the merits of the examiner’s rejections under 35 U.S.C. § 112,
first paragraph. Moreover, because it is improper to
determine whether appellants’ specification would have enabled
persons skilled in the art to make and use the full scope of
the invention claimed without reasonably understanding or
being able to ascertain the full scope of the subject matter
claimed, I vote to VACATE the examiner’s rejections of Claim
55 under 35 U.S.C. § 112, first paragraph, and recommend that
they not be reentered until such time as Claim 55 satisfies
the requirements of 35 U.S.C. § 112, second paragraph.
Conclusion
I agree with the majority that the rejection of Claim 55
under 35 U.S.C. § 112, second paragraph, should be affirmed.
Because the reasons why I would affirm the rejection differ
substantially from those provided by the examiner, I also
would denominate my affirmance a NEW GROUND OF REJECTION under
37 CFR
§ 1.196(b).
However, I would vacate and remand rather than decide the
merits the examiner’s rejections of Claim 55 under 35 U.S.C.
§ 112, first paragraph.
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