Appeal No. 1998-0318 Page 3
Application No. 08/539,466
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejections, we make reference to the Supplemental
Answer (Paper No. 25) for the examiner's complete reasoning in support of the rejections,
and to the Brief (Paper No. 22) and Reply Brief (Paper No. 24) for the appellants’
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, the applied prior art references, the respective
positions articulated by the appellants and the examiner, and the guidance provided by our
reviewing court. As a consequence of our review, we make the determinations which
follow.
The Rejection Under 35 U.S.C. § 112, First Paragraph
Claims 25 and 40-57 stand rejected as containing subject matter which was not
described in the specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventors, at the time the application was filed, had possession of the
claimed invention.
The examiner has not explained why claim 25 runs afoul of the first paragraph of
Section 112, and the reason is not apparent to us. This being the case, we will not sustain
the rejection of claim 25 under Section 112.
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