Appeal No. 97-0939
Application 08/127,319
description requirement of § 112 is not whether appellant’s original disclosure exactly describes the
subject matter claimed, but rather whether persons of ordinary skill in the art would have recognized
that appellant invented what is now claimed. In that we believe an artisan would recognize from a
review of the original disclosure as a whole that appellant invented what is now claimed, we will not
sustain the examiner’s rejection of the appealed claims under 35 U.S.C. § 112, first paragraph.
Rejection (b)
The 35 U.S.C. § 112, Second Paragraph, Rejection
The examiner has concluded that claim 25 is indefinite because of the double inclusion of the
word “said” in describing one of the steps (i.e., “said said step of inserting said distal tip of said
instrument including . . .” (claim 25, lines 3-4)). Appellant has failed to point out any error in the4
examiner’s position and instead has submitted a proposed amendment (Paper No. 25) filed with the
reply brief to overcome the rejection. The examiner, however, has refused to enter this proposed
amendment. Advisory letter (Paper No. 27, mailed November 12, 1997).
The rejection under the second paragraph of § 112 is therefore still before us, and claim 25 has
not been amended as set forth in the unentered proposed amendment. Under these circumstances, we
will sustain the examiner’s newly entered rejection of claim 25 under 35 U.S.C. § 112, second
4Although not rejected by the examiner on this ground, claim 27, line 21, contains a similar
double inclusion of the word “said.”
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