Appeal No. 97-0124
Application No. 08/273,672
736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984), cert.
denied, 469 U.S. 1209 (1985), citing In re Kaslow, 707 F.2d 1366,
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
This rejection resulted from an amendment during prosecution
which added claims 4-9 directed to an electron gun arrangement
incorporated in a vacuum tube. The original specification and
claims described only a cathode ray tube incorporating the
electron gun structure with the Examiner concluding, therefore,
that support existed only for claims drawn to a cathode ray tube.
In response, Appellant contends that proper support exists in the
original specification for the vacuum tube claims since a cathode
ray tube is a species of the vacuum tube genus as evidenced by
Appellant’s submitted excerpt from Van Nostrand’s Scientific
Encyclopedia.
After careful consideration of the arguments of record, we
are in agreement with Appellant’s position as stated in the
Brief. As correctly argued by Appellant, it is a well settled
Patent and Trademark Office practice in the electrical and
mechanical arts to permit generic claims even though only one
species of the genus may be disclosed in the specification.
Accordingly, we can not sustain the Examiner’s rejection of
claims 4-9 under the first paragraph of 35 U.S.C. § 112.
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