Appeal No. 1999-0936
Application No. 08/890,263
inserting the spread-apart leading-edge sheath
[onto] in combination with the blade subassembly.
No references are relied upon in the final rejection of
claim 3.
Reissue claim 3 stands rejected under 35 U.S.C. § 112,
first paragraph, as being based upon a patent disclosure that
fails to provide descriptive support for the invention as now
claimed.2,3
The examiner’s rationale for the rejection is found on
page 2 of the final rejection and reads as follows:4
The change to first and second instead of upper and
lower is considered new matter . . . . [T]he terms
2In the final rejection, the examiner also objected to the specification
and drawing as containing new matter; however, this objection has not been
carried forward in the examiner’s answer. Had the examiner maintained the
objection, we would have been obligated to consider the merits thereof. See
M.P.E.P. § 2163.06 (II) REVIEW OF NEW MATTER OBJECTIONS AND/OR REJECTIONS.
3Based on the designation of elements 66U and 66L as upper and lower
suction cups, and the depiction of the apparatus in Figure 3 as being
supported on a ground surface, it is apparent that Figure 3 is a partial
elevation of the apparatus. Accordingly, the description of Figure 3 in the
BRIEF DESCRIPTION OF THE DRAWINGS section of the specification should be
amended to reflect that Figure 3 is a partial elevation view of Figure 2
rather than a partial plan view thereof.
4Upon consideration of appellants’ arguments in the main brief, the
standing 35 U.S.C. § 112, first paragraph, rejection is no longer based on
changing “onto” in patent claim 3 to “in combination with” in reissue claim 3.
See page 2 of the examiner’s answer.
3
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