Appeal No. 1997-2954
Application No. 08/401,876
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants’ specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner.
We first turn to the examiner’s rejection of claims 22-45
under 35 U.S.C. § 112, first paragraph, wherein the examiner
is of the opinion that the disclosure is enabling only for
claims limited to a rotatable platen with a means to rotate
the platen. The examiner refers to MPEP §§ 706.03(n) and
706.03(z) and states that the instant claims are of a broader
scope than applicants’ originally filed claims were intended
to cover. Appellants note (brief, page 4) that MPEP §
2164.08, which is directed to a critical feature taught in the
specification not being recited in the claims, replaces the
MPEP sections cited by the examiner. Since MPEP §§ 706.03(n)
and 706.03(z) were not part of the MPEP at the time the
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007