Appeal No. 2000-2194
Application No. 08/705,843
decision, Appellants’ arguments set forth in the Briefs along with
the Examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the Examiner’s Answer.
It is our view, after consideration of the record before us,
that Appellants’ specification in this application describes the
invention set forth in claims 6-12, 14, and 15 in a manner which
complies with the requirements of 35 U.S.C. § 112. We are also of
the conclusion that the evidence relied upon and the level of skill
in the particular art would not have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth in
the claims 1-5 and 13. Accordingly, we reverse.
We consider first the Examiner’s rejection of claims 6-12, 14,
and 15 under the written description requirement of the first
paragraph of 35 U.S.C. § 112. The function of the written
description requirement of the first paragraph of 35 U.S.C. § 112
is to ensure that the inventor had possession, as of the filing
date of the application relied on, of the specific subject matter
later claimed by him. In re Wertheim, 541 F. 2d 257, 262, 191 USPQ
90, 96 (CCPA 1976).
The genesis of the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection was an amendment filed November 23, 1998
during prosecution which added the language “... since the coin
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