Appeal No. 2000-0920
Application No. 08/829,034
(c) claims 1-9, 11-17 and 35-37, under 35 U.S.C. § 102(b) as
being anticipated by Holt or, in the alternative, under 35 U.S.C.
§ 103, as being obvious in view of Holt;
(d) claims 10, 18, 37 and 38, under 35 U.S.C. § 103 as being
unpatentable over Holt in view of Hirayama.2
Reference is made to appellant’s brief and supplemental
brief (Paper Nos. 14 and 16) and to the examiner’s answer (Paper
No. 17) for the respective positions of appellant and the
examiner regarding the merits of these rejections.
DISCUSSION
The 35 U.S.C. § 112, first paragraph, rejection.
The examiner’s first reason for rejecting claims 11-18 under
35 U.S.C. § 112, first paragraph, is based on the enablement
requirement found therein. According to the examiner (answer,
paragraph bridging pages 3-4):
The specification does not enable any person skilled in
the art to which it pertains, or with which it is most
nearly connected, to make and use the invention
2On page 6 of the answer, the examiner states that claims
10, 18, 37 and 38 are rejected under 35 U.S.C. § 103 “as being
unpatentable over Holt et al[.] (US 4,988,645) as applied to
claims 1-9 and 11-17 above, and further in view of Holt et al[.]
(US 4,988,645) alone and Hirayama et al[.] (US 5,138,146).” Like
appellant (brief, page 6; supplemental brief, page 3), we
understand this rejection as being based on the combined
teachings of Holt and Hirayama.
3
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