Appeal No. 2001-0074
Application 09/039,829
applicator to permit selective adjustment in inclinations. (Appeal Brief, page 1, line 18 -
page 2, line 8).
The Section 112 Rejection
Claims 1-2 and 4-7 stand rejected under 35 U.S.C. §112, first paragraph, as
containing subject matter which was not described in such a way as to reasonably
convey to one skilled in the relevant art that the inventors, at the time the application
was filed, had possession of the claimed invention.
The record indicates that Claim 1 has been amended to recite that the tape
“includes” a backing ribbon and a coating composition. (Amendment of October 25,
1998, page 1; Paper #9). Claim 1 as filed recites that the tape “consists of” a backing
ribbon and a coating composition. (Specification, page 7, lines 3-4). The specification
recites throughout that the tape “consists of” a backing ribbon and a coating
composition (Examiner’s Answer, page 3, lines 1-3; see Specification, page 2, line 16;
page 5, lines 10-12). These facts are not in question.
The Examiner concludes that one reading the originally filed application where
consisting of is used throughout would not think that Applicant intended other items to
be part of the tape. (Examiner’s Answer, page 3, lines 5-7).
The Appellant, on the other hand, states that nowhere in his application does it
recite “that the tape could not include other items besides ‘a backing ribbon carrying a
coating composition, and the backing ribbon from which the coating composition has
been removed.’” (Appeal Brief, page 3, lines 10-12). Therefore, he reasons, even if the
amendment broadens claim 1, no new matter is added.
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007