Appeal No. 1996-1716
Application No. 08/344,532
does not provide support for the invention as is now claimed.”
(Final rejection dated Feb. 2, 1995, Paper No. 8, page 2). 3
Claims 1-4 and 7 stand rejected under 35 U.S.C. § 103 as
unpatentable over Koleske and Blount and Tominaga in view of
Nishikawa and Tanaka and Aharoni (Answer, page 3). We reverse
the examiner’s rejections for reasons which follow.
OPINION
A. The Rejection under 35 U.S.C. § 112, First Paragraph
The examiner submits that there is no support for the
claimed epoxy resin being present in a “major amount,” stating
that the only amounts of epoxy resin in the originally filed
disclosure are the specific amounts found in the examples and
that these specific amounts do not provide support for the
3The Answer does not contain this rejection under the
first paragraph of § 112 (see page 3). However, we consider
this to be an inadvertent error on the part of the examiner
since the Answer on page 3 does contain the objection to the
specification under
§ 112, first paragraph, but does not repeat the rejection as
stated in the final rejection dated Feb. 2, 1995, Paper No. 8,
page 2. The basis for this objection in the Answer is the
same basis as stated in the final rejection for the rejection
of claims 1-4 and 7 under § 112, first paragraph.
Accordingly, for purposes of this appeal, we will review the
rejection of claims 1-4 and 7 under § 112, first paragraph,
for "lack of support," i.e., failure to comply with the
written description requirement.
3
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