Appeal No. 1996-2163
Application 08/106,541
belief that his prior microwave antenna patent was considered by him to be pertinent,
analogous prior art to the claims present in this appeal. The submission of these
documents was not formally in the context of the disclosure requirement in accordance with
Rule 56, however. Additionally, we note that although the discussion in the paragraph
above the middle of page 4 of the specification of the parent application that appellant
regarded the ancient chinese art of bell making’s more recently used designs employing
serrated-rolled edges as pertinent prior art, no mention is made of this subject matter in
the present CIP application. For his part, the examiner appears not to have fully
appreciated the teaching value of all this prior art made known to the examiner by
appellant. In any continuing prosecution of this application or any subsequent application,
appellant is expected to comply with the provisions of 37 CFR § 1.56 and the examiner is
expected to fully consider the materiality of any new submissions by appellant as well as
the above noted prior art.
SUMMARY
We have reversed the best mode and enablement rejections of claims 18 and 19
under 35 USC § 112, first paragraph. We have also reversed the rejection of claims 30
and 32 under the written description portion of the first paragraph of 35 USC §112. As to
the rejection of claims 17-32 under the second paragraph of 35 USC § 112, we have
sustained the rejection of claims 21, 23, 24 and 26-28, but have reversed the rejection of
claims 17-20, 22, 25 and 29-32.
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