Appeal No. 1999-1651
Application No. 08/775,308
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art reference, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
35 U.S.C. § 112, FIRST PARAGRAPH
At the outset, we note that the examiner’s position with respect to this rejection
has not been thoroughly understood by appellants or the Board. With this said, we note
that even if read with great latitude and deference to the examiner, we still do not find
that the examiner has made a sufficient showing to support a reasonable basis for a
rejection under 35 U.S.C. § 112, first paragraph.
Furthermore, we note that the examiner has based the rejection upon only the
enablement portion of the statute in the final rejection, and we address the arguments
thereto. In the examiner’s answer at pages 4-5, the examiner does argue at length a
lack of disclosure of the best mode, but the examiner did not set forth best mode as a
grounds of rejection. Argument thereto is moot since the examiner merely incorporated
the rejection set forth in paper number 9 and has not set forth a new ground of rejection
in the answer. (See answer at page 3.)
Also, if the examiner intended to make a rejection under the written description
portion or the statute, the examiner has not adequately identified and set forth such
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