Appeal No. 1997-1190
Application No. 08/427,972
The Rejection of Claims 1 through 11, 13, 14 and 16 through 29
under 35 U.S.C. § 112, first paragraph
We will not sustain the examiner's rejection of claims 1
through 11, 13, 14 and 16 through 29 under 35 U.S.C. § 112,
first paragraph.
At the outset, we note that in the final rejection (Paper
No. 28) the examiner objected to the specification under
35 U.S.C. § 112, first paragraph, as failing to adequately
teach how to make and/or use the invention and rejected all of
the pending claims in the application under 35 U.S.C. § 112,
first paragraph, "for the reasons set forth in the objection
to the specification" (final rejection, page 5). At pages 7
and 8 of the supplemental answer, the examiner repeats the §
112, first paragraph, objection to the specification made in
the final rejection, but at page 9 states:
Claims 1-11, 13, 14, and 16-29 are rejected under 35
U.S.C. § 112, first paragraph, because the best mode
contemplated by the inventor has not been disclosed.
Evidence of concealment of the best mode is based upon
the same reason set forth in the objection to the
specification.
Where claims are based on a specification which fails to
adequately teach a person of ordinary skill in the art how to
make and/or use the invention, the proper ground of rejection
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