Appeal No. 1997-3975
Application No. 08/395,376
the claimed invention in a manner which complies with the
requirements of
35 U.S.C. § 112. We are also of the view that the disclosure
of Shofner fully meets the invention as recited in claims 9-
11. Finally, it is our view that the collective evidence
relied upon and the level of skill in the particular art would
have suggested to one of ordinary skill in the art the
obviousness of the invention as set forth in claim 16, but not
the invention as set
forth in claims 13-15, 17 and 18. Accordingly, we affirm-in-
part.
We consider first the rejection of claims 9-11 and 13-
18 based on the first paragraph of 35 U.S.C. § 112. The
examiner’s rejection is based on the position that the
originally filed specification does not support the invention
now being claimed. Amendments were made to the specification
which the examiner finds to be new matter. The claims on
appeal are rejected based on the examiner’s position that the
specification contains this “new matter.” Appellants argue
that the appealed claims do not recite any subject matter
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007