Appeal No. 2001-0688
Application No. 08/689,721 Page 3
Claims 11 and 12 stand rejected2 under 35 U.S.C. § 112, first
paragraph, due to lack of possession,3 and lack of enablement.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejection,
we make reference to the examiner's answer (Paper No. 44, mailed
November 20, 2000) for the examiner's complete reasoning in
support of the rejections, and to appellant's brief (Paper No.
40, filed May 5, 2000) and supplemental brief (Paper No. 43,
filed September 12, 2000) for appellant's arguments thereagainst.
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
2 The examiner (answer, page 2) objects to the amendment filed October
12, 1999 under 35 U.S.C. § 132 as introducing new matter into the disclosure,
and refers to the objection as a ground of rejection. On page 3 of the
answer, the examiner clarifies that the claims have not been rejected under 35
U.S.C. § 132. From our review of the record, we find that the examiner's
rejection of claims 11 and 12 under 35 U.S.C. § 112, first paragraph, is based
in part on the amendment, which the examiner considers to have introduced new
matter into the disclosure. In addition, if we follow the examiner's line of
reasoning, it is unclear as to why the examiner only objects to the October
12, 1999 amendment and does not object to the December 14, 1999 amendment
which introduced identical language into the disclosure with respect to claim
12. In any event, the objection to the amendment, itself, is not before us on
appeal. The objection is considered only to the extent that the examiner
relies upon the amendment as a basis for the rejection of the claims under 35
U.S.C. § 112, first paragraph. Accordingly, the only issue before us on
appeal is the rejection of claims 11 and 12 under 35 U.S.C. § 112, first
paragraph, based upon the grounds of lack of written description and lack of
enablement.
3 Although the examiner uses the term "possession," we consider the
rejection to be based on a lack of written description, to be commensurate
with the language of the statute.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007