Appeal No. 1998-1714
Application No. 08/441,823
In re Warner, 579 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968), quoted in In re GPAC, Inc.,
57 F.3d 1573, 1582, 35 USPQ2d 1116, 1123 (Fed. Cir. 1995). We
find no disclosure in Shiino of applying the process disclosed
therein to anything other than parts, and there is no evidence
therein to support the examiner’s finding that it would have been
obvious to apply it to a person’s hands, which finding appears to
be based on impermissible hindsight gleaned from appellant’s own
disclosure.
We therefore will not sustain rejection (4).
Rejections Pursuant to 37 CFR § 1.196(b)
Pursuant to 37 CFR § 1.196(b), the appealed claims are
rejected as follows:
(A) Claims 3, 4 and 13 to 17 are rejected as being unpatentable
for failing to comply with 35 U.S.C. § 112, second paragraph, in
that:
(i) Claims 3 and 4 are incomplete, being dependent on a claim
(claim 2) which has been cancelled. Ex parte Brice, 110 USPQ 560
(Bd. App. 1955).
(ii) In claim 13, line 7, "said fluorescent agent" has no
antecedent basis.
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