Appeal No. 1998-2806
Application No. 08/459,721
that this patent does not provide for that which we have found
lacking in the examiner’s rejections of claims 18 through 26
above.
To summarize our decision, we note that both the
examiner's rejection of claims 18 through 20 under 35 U.S.C. §
102(b) and of claims 21 through 26 under 35 U.S.C. § 103 have
not been sustained.
In addition to our determinations above, we find it
necessary to REMAND this application to the examiner for a
consideration of whether or not a rejection of the claims on
appeal would be appropriate under either or both 35 U.S.C. §
112, first paragraph, as being nonenabling, and/or 35 U.S.C. §
112, second paragraph, as being indefinite. Our concern here
is that we find no clear basis upon which to select a given
viscosity for the filler material based on providing a tactile
response that is "substantially the equivalent of the tactile
response of a normal human breast." Appellants apparently
intend to encompass a viscosity range of greater than about
10,000 cps (claims 23 and 26). However, with regard to the
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