Appeal No. 1996-3214 Page 11
Application No. 08/195,897
describe what applicants regard as their invention and/or omit
essential elements, steps or necessary structural cooperative
relationship of elements. See In re Collier, 397 F.2d 1003,
1005, 158 USPQ 266, 267 (CCPA 1968).
Under the circumstances recounted above, we consider
claims 14-20 to be ambiguous in describing that which
applicants regard as invention and, as a result, as failing to
comply with 35 U.S.C. § 112, second paragraph. Compare, e.g.,
Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Int. 1990).
OTHER ISSUES
In the event of further or continuing prosecution, the
examiner and appellants should also consider whether or not the
claimed subject matter has descriptive and/or enabling support
in the original disclosure within the meaning of 35 U.S.C. §
112, first paragraph in light of amendments presented.
CONCLUSION
The examiner's decision to reject claims 14-20 under 35
U.S.C. § 103 as being unpatentable over Gorshkov in view of
Mendicino is reversed.
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