Appeal No. 1999-0822 4
Application No. 08/732,866
reasonably convey to one skilled in the relevant art that the inventor(s), at the time the
application was filed, had possession of the claimed invention.
Claims 1 through 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bistak.
OPINION
We have carefully considered all of the arguments advanced by the appellant and
the examiner, and agree with the appellant that the rejection of claims 1 through 7 under
35 U.S.C. § 112, first paragraph and claims 5 through 7 on the grounds of obviousness
are not well founded. Accordingly, we reverse these rejections. We agree with the
examiner that the rejection of claims 1 through 4 on the grounds of obviousness is well
founded. Accordingly, we sustain this rejection.
As an initial matter, the appellant states that, “[c]laims 1- 4 stand or fall together
and separately from claims 5-7.” See Brief, page 3. Accordingly, we select claim1 the
sole independent article claim and dependent claim 5 as representative of the claimed
subject matter and limit our consideration thereto. See 37 CFR § 1.192 (c)(7)(1997).
The Rejection under § 112
It is well settled that a specification complies with the 35 U.S.C. § 112, first
paragraph, written description requirement if it conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, the inventor was in possession of the
invention. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007