Appeal No. 1997-0334
Application 08/211,698
determining the effective date of an application under 35
U.S.C. § 102(e) is accorded with respect to what is now
claimed by an applicant. That is, under 35 U.S.C. § 119 the
question to be resolved is: does an applicant's disclosure in
the specification of the benefit application relied on satisfy
the requirements of 35 U.S.C. § 112, first paragraph, with
respect to the full scope of the subject matter now being
claimed by applicant? See In re Gostelli, 872 F.2d 1008, 10
USPQ 2d 1614 (Fed. Cir. 1989): Kawai
v. Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973). While
the examiner has acknowledged receipt of the translation in
Paper Number 13, there is no other discussion of the
translation in the record. The examiner has an affirmative
duty to analyze the translation for compliance with the
statute.
In his Answer, the examiner has objected to claim 5 as
dependent on a rejected claim and has further indicated that
claim 5 would be allowable if rewritten in independent form.
Nevertheless, the examiner and appellants should reconsider
the indicated allowability of the subject matter of claim 5 in
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