Appeal No. 1999-0956
Application No. 08/584,084
support the examiner’s position that the original disclosure does
not enable and/or provide descriptive support for the subject
matter of amended claim 28.
The examiner’s third reason for rejecting the claims applies
to claims 48-52. The examiner considers that
[b]ecause the specification defines multiple means
cooperating to accomplish the claimed multiple
functions [e.g., folding about first and second fold
lines, or folding and flipping the form] while the
claims define distinct means to accomplish the claimed
multiple functions the claims are directed to an
invention distinct from that disclosed and, thus, do
not satisfy the written description requirement.
[Answer, page 4.]
Once again, the examiner’s reasoning in support of the
rejection is based on an interpretation of the claims with which
we do not agree. While the examiner appears to take the position
that the claim terminology requires the means for folding about
the first fold line and the means for folding about the second
fold line (claim 39), and the means for folding and the means for
flipping (claim 48), to be separate and distinct entities with no
common elements, we view the claims as encompassing within their
metes and bounds means that may have certain elements in common.
See Palmer v. United States, 423 F.2d at 320, 163 USPQ at 253;
and In re Kelley, 305 F.2d at 916, 134 USPQ at 402 (fact that
structural elements performing more than one function are common
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