Appeal No. 1998-0607 Page 3
Application No. 08/506,857
(2) Claims 4 and 5 stand rejected under 35 U.S.C. § 112, first paragraph, as containing
subject matter for which the specification does not provide an adequate written description.4
(3) Claims 1-5 stand rejected under 35 U.S.C. § 103 as being unpatentable over Eustache
in view of Miller.
(4) Claims 1-3 stand rejected under 35 U.S.C. § 103 as being unpatentable over Eustache
in view of Charles.5
Reference is made to the brief and reply brief (Paper Nos. 12 and 18) and the answer
and supplemental answer (Paper Nos. 15 and 19) for the respective positions of the appellants
and the examiner with regard to the merits of these rejections.
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. As a consequence of our review, we
make the determinations which follow.
4While it is not clear from the examiner's statement of the rejection whether it is based upon the
enablement or written description requirement of the first paragraph of 35 U.S.C. § 112, the examiner's explanation
of the rejection appears to be concerned with enablement. In any event, while the basis of the rejection appears to
us to be lack of enablement, our decision addresses both possible bases to determine whether a rejection under 35
U.S.C. § 112, first paragraph, is sustainable. In light of our treatment of this rejection, the appellants are not
prejudiced thereby.
5This rejection was entered as a new ground of the rejection in the examiner's answer (Paper No. 15, page
8). While the rejection as stated in the answer referred to Miller as the reference relied upon, it is clear from both
the examiner's explanation of the rejection (answer, page 8) and the examiner's supplemental answer (Paper No. 19,
page 2) that the rejection is based upon Charles.
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