Appeal No. 1998-0318 Page 6
Application No. 08/539,466
clearly would subvert the requirement of 35 U.S.C. § 112, first paragraph, that the
inventor(s) describe "the invention" in the specification "in such full, clear, concise, and
exact
terms . . . . "2
We are not persuaded by the appellants’ arguments on page 6 of the Brief that the
examiner’s conclusion in this matter is in error. The first argument, which merely asserts
that the examiner is wrong, that is, that the mere incorporation by reference satisfies the
requirements of the first paragraph of section 112, is not substantiated by citation to
supporting legal authority. The second, that the disclosed micro-sample tube is
“particularly beneficial in a method with liquid level sensing,” simply begs the question.
The rejection of claims 40-57 under 35 U.S.C. § 112, first paragraph, is sustained.
2For a discussion of the PTO’s position regarding the incorporation of patents into
the specification of an application by reference, see MPEP Section 608.01(p).
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