Appeal No. 1999-2845 Page 14
Application No. 08/495,471
that the subject matter of claim 34 would have been obvious at
the time the invention was made to a person having ordinary
skill in the art from the applied prior art. 1
With regard to claim 36, it is clear to us that the
subject matter of claim 36 (i.e., an inert gas chamber in the
container) is not suggested by the applied prior art. The2
examiner has not even alleged that the subject matter of claim
36 would have been obvious at the time the invention was made
1While the examiner has stated (final rejection, p. 4)
that "[t]he use of an 'inert gas' is deemed old and no
teaching is deemed necessary," the examiner never determined
that adding a compressed air source connected to Held's tank
would have been obvious at the time the invention was made to
a person having ordinary skill in the art.
2It is not clear to us where the original disclosure
provides written description support (required by the first
paragraph of 35 U.S.C. § 112) for the limitation of claim 36.
While Figure 1 clearly discloses inert gas containers 19, the
specification (p. 19) clearly states that inert gas from the
containers 19 is introduced via connection 18 into the
interior 10 of the container 7. Thus, the inert gas
containers 19 are not an inert gas chamber within the
container as set forth in claim 36. The examiner should
determine whether or not claim 36 is in compliance with the
written description requirement of the first paragraph of 35
U.S.C. § 112.
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007