Appeal No. 98-1538
Application No. 08/698,470
necessary in order to determine what in fact is being claimed.
Since a rejection on prior art cannot be based on speculations
and assumptions (see In re Steele, 305 F.2d 859, 862-63, 134
USPQ 292, 295-96 (CCPA 1962) and In re Wilson, 424 F.2d 1382,
1385, 165 USPQ 494, 496 (CCPA 1970)), we are constrained to
reverse the examiner's rejections of (1) claim 32 under 35
U.S.C. § 102(e) as being anticipated by Fox, (2) claims 32 and
33 under 35 U.S.C. § 103(a) as being unpatentable over
Whitaker in view of either Simoglou or Hackner and (3) claims
33 and 34 under 35 U.S.C. § 103(a) as being unpatentable over
Whitaker in view of Fox. We hasten to add that this is a
procedural reversal rather than one based upon the merits of
the §§ 102(e) and 103(a) rejections.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejections:
Claims 32-34 are rejected under 35 U.S.C. § 112, first
paragraph, as being based upon an original disclosure which
fails to provide support for the invention now claimed. We
initially observe that the description requirement found in
the first paragraph of 35 U.S.C. § 112 is separate from the
enablement requirement of that provision. See Vas-Cath, Inc.
13
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: November 3, 2007