Appeal No. 2000-1241
Application No. 08/424,156
the rejections, and to appellants' substitute brief (Paper No. 13, filed May 5, 1997) and
substitute reply brief (Paper No. 23, filed Nov. 30, 1999) for appellants' arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants' specification and claims, to the applied prior art references, and to the
respective positions articulated by appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
35 U.S.C. § 112, FIRST PARAGRAPH
A claim which omits matter disclosed to be essential to the invention as
described in the specification or in other statements of record is subject to rejection
under 35 U.S.C. § 112, first paragraph, as not enabling, and/or under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the subject
matter which an applicant regards as his invention. See In re Mayhew, 527 F.2d 1229,
1233, 188 USPQ 356, 358 (CCPA 1976) (claims which failed to recite the use of a
cooling zone, specially located, which the specification taught as essential, was not
supported by enabling disclosure); In re Venezia, 530 F.2d 956, 959, 189 USPQ 149,
152 (CCPA 1976) (since all of the essential parts of the "kit" are recited in the claims,
there is no basis for holding the claims incomplete); and In re Collier, 397 F.2d 1003,
1005, 158 USPQ 266, 268 (CCPA 1968) (claim failed to interrelate essential elements
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007