Appeal No. 1999-0434
Application No. 08/664,257
Appellant's submitted evidence thus fails to support the averment that the claimed
4
properties are inherent in the materials that were described in the original disclosure.
Based on the evidence before us, we conclude that appellant was not in possession of the
invention that is now claimed.
CONCLUSION
The rejections of claims 3-15, 17, 18, and 30-54 under 35 U.S.C. § 103 are
reversed.
Claims 3-15, 17, 18, and 30-35 are newly rejected by us under 35 U.S.C. § 112,
first paragraph.
This decision contains a new ground of rejection pursuant to 37 CFR
§ 1.196(b)(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131,
53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, "A new ground of rejection shall not be considered final
for purposes of judicial review."
4 The claims we are rejecting also raise the issue of lack of enablement of the invention, within the
meaning of the separate requirement of 35 U.S.C. § 112, first paragraph. That is, on this record it is not
clear that the artisan would have known how to make and use a "fluoropolymer" having the claimed
properties "at high frequencies." However, our present analysis is limited to consideration of the written
description, and we enter the new ground of rejection accordingly. Any evidence submitted by appellant
that establishes the artisan would have recognized the inherency of the claimed properties would also serve
to show enablement of the claimed invention.
-11-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007