Appeal No. 1998-1711 Page 3
Application No. 08/506,387
1. Claims 1-10 stand rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which the
appellants regard as the invention.
2. Claims 4-7 stand rejected under 35 U.S.C. § 112, first paragraph, as containing subject
matter which was not described in the specification in such a way as to reasonably convey to
one skilled in the relevant art that the inventors, at the time the application was filed, had
possession of the claimed invention.3
3. Claims 1-3 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Eustache.
4. Claims 9 and 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Eustache.
5. Claims 4-6 and 8 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Eustache in view of Penkwitz.
Reference is made to the brief and reply brief (Paper Nos. 12 and 15) and the answer
(Paper No. 14) for the respective positions of the appellants and the examiner with regard to
the merits of these rejections.
3While the rejection under 35 U.S.C. § 112, first paragraph, is stated in the form of a description
rejection, the basis of the rejection, as explained by the examiner, appears to be that the specification fails to
adequately describe the invention so as to enable one of ordinary skill in the art to make and/or use the same (i.e.,
lack of enablement). Thus, 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.
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