Appeal No. 1997-3870
Application No. 08/421,055
(Answer, page 4) but reverse all of the other rejections for
reasons which follow.
OPINION
A. The Rejections under 35 U.S.C. § 112, ¶1
The examiner has first rejected the claims on appeal under
35 U.S.C. § 112, first paragraph, “as being not (completely)
supported by the disclosure.”1 Id. We note that the language of
this rejection is equivalent to stating that appellants’
disclosure fails to meet the “written description” requirement of
35 U.S.C. § 112, ¶1. See Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991).
The examiner finds that there is no apparent support in the
original disclosure for the claimed limitation requiring the
dimensionally stable film to have a preselected surface
topography, i.e., “said film having a pre-selected surface
topography” (Answer, page 6; claim 6, part (a)).
Appellants agree that the exact language used in the claims
“does not necessarily appear in the specification.” Brief, page
1 We note that appellants state “[t]he rejected claims stand
or fall together.” Brief, page 6. In view of this statement and
the provisions of 37 CFR § 1.192(c)(7)(1995), we select claim 6
from the grouping of claims and decide this appeal as to this
ground of rejection on the basis of this claim alone.
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