Appeal No. 1999-0194
Application No. 08/436,626
the particulars of claims 11 and 16 in claims 20 and 27. See
Ex parte Porter, 25 USPQ2d 1144, 1147 (Bd. Pat. App. & Int.
1992) and Manual of Patent Examining Procedure (MPEP) (7th
ed., July 1998) § 2173.05(f). It is clear, however, that
these preamble recitations impart structural limitations to
the claimed apparatus only to the extent specific structure is
required in order to render the claimed apparatus capable of
functioning in the manner called for in the preambles.
In light of the above, the rejection of claims 20-27
under 35 U.S.C. § 112, second paragraph, shall not be
sustained.
Rejections (2) and (3)
I.
As noted above, the examiner’s rejections of claims 1-5,
8-14, 16-22 and 25-27 (rejection (2)) and claims 1-14 and 16-
27 (rejection (3)) under 35 U.S.C. § 102(b) are predicated on
information found in the above noted declaration to Bonstedt
and the above noted declaration to Nagle.
The Bonstedt declaration indicates that in the period
leading up to the construction of the Conewago Creek and
10
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