Appeal No. 95-4047
Application 07/931,206
making a temporary replacement window in the form of an
envelope comes solely from the description of appellants’
invention in their specification. Thus, the examiner used
impermissible hindsight when rejecting the claims. See W.L.
Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276 F.2d
393, 396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, we
reverse the rejection under 35 U.S.C. § 103.
Rejection under 35 U.S.C. § 112, first paragraph
The examiner makes no argument as to why appellants’
specification does not describe the claimed invention such
that an enabling disclosure is provided, and no reason is
apparent. Consequently, we reverse the rejection under 35
U.S.C. § 112, first paragraph.
Rejection under 35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have
been interpreted by one of ordinary skill in the art in light
of appellants’ specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree
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