Appeal No.1998-2486
Application No. 08/751,375
Claims 1-16 and 20 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Morehouse. Claims 17-19 and 21 stand rejected under 35 U.S.C. § 103 as unpatentable
over Morehouse. Additionally, claims 17-19 and 21 stand rejected under 35 U.S.C. § 112,
first paragraph, as relying on an inadequate written description.1
Reference is made to the brief and answer for the respective positions of appellant
and the examiner.
OPINION
Turning first to the rejection of claims 17-19 and 21 under 35 U.S.C. § 112, first
paragraph, as relying on an inadequate written description, the examiner contends that the
original disclosure does not support compressing the resilient material “by at least
approximately 50% of said uncompressed thickness,” as is now claimed. Appellant does
not dispute that this limitation was not part of the original claims nor was there a
description in the specification, as originally filed. It is appellant’s contention that the
original drawings provide support for this claimed limitation.
1The examiner has not formally maintained the rejection under 35 U.S.C. § 112 since the
rejection has not been repeated in the answer. Normally, we would treat the absence of the rejection
as indicating that the rejection has been withdrawn by the examiner. However, in view of the record
before us (appellant apparently thinks the rejection has been maintained, indicating it as one of the
issues [page 7-brief]; appellant has argued it; the examiner has never withdrawn the rejection; the
examiner states [answer-page 3] that appellant’s statement of the issues is correct; and the examiner
responds to appellant’s arguments regarding this rejection), we think it is clear that the examiner
intended to maintain the rejection under 35 U.S.C. § 112. Accordingly, we treat claims 17-19 and 21
as being rejected under 35 U.S.C. 112, first paragraph.
3
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