Appeal No. 1998-1266 Page 11
Application No. 08/354,459
As a result, the disclosure in appellants’ application as
originally filed does not reasonably convey to the artisan that
appellants had possession at that time of the subject matter
now claimed. The disclosure as originally filed, therefore,
does not satisfy the description requirement in the first
paragraph of
§ 112. See In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983).
With regard to the new ground of rejection of claims 3 and
5 through 8 under the second paragraph of § 112, our difficulty
with the claim language again focuses on the recitation in
claim 5 that the transverse opening has “at least one of a size
and geometry which is substantially different from a size and
geometry of the formed hole.” Given the foregoing
interpretation of this limitation, it is unclear how a size of
an opening alone can be construed as being different from a
geometry of a hole.
The decision of the examiner to reject claims 3, 5, 6 and
8 under § 103 is affirmed, and the decision of the examiner to
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