Appeal No. 1999-2316
Application No. 08/640,262
containing such reference for the purpose of the
disclosure required by 35 USC [§] 112, first paragraph.
In re de Seversky, 474 F.2d 671, 177 USPQ 144, (CCPA
1973)”.
Ordinarily, any “essential material” that is necessary to
describe the claimed invention may not be incorporated by
reference to “non-patent publications.” See MPEP § 608.01(p).
In the present case, however, the disclosure is very clear
that the disclosed and claimed cable must meet Category 5
electrical requirements such as provided in Electronic
Industries Association specification TIA-568A (specification,
pages 4 through 6 and 10). We agree with the declarant, John
Mottine, that the claimed formulas are used in the TIA-568A
Standard in connection with Category 5 cable requirements
(declaration, paragraphs 11 and 12). Thus, the rejection of
claims 45 and 47 through 50 under the first paragraph of 35
U.S.C. § 112 is reversed because the originally filed
disclosure did contain sufficient disclosure for the
specifically claimed formulas “to permit those skilled in the
art to fully practice Appellants’ claimed invention” (brief,
page 15).
Turning to the obviousness rejection of claim 39,
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