Appeal No. 2002-1447
Application 09/167,776
THE REJECTION
Claims 1-8 stand rejected as follows: under 35 U.S.C. § 112,
first paragraph, written description requirement, and under
35 U.S.C. § 103 as being unpatentable over Stahl.2
OPINION
We reverse the aforementioned rejections.
Rejection under 35 U.S.C. § 112, first paragraph
A specification complies with the 35 U.S.C. § 112, first
paragraph, written description requirement if it conveys with
reasonable clarity to those skilled in the art that, as of the
filing date sought, the inventor was in possession of the
invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-
64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
The examiner argues that it is not clear in view of the
appellant’s specification 1) what method step is performed to
prevent flaws, 2) how technical effort and handicap are related,
3) what “technical effort value” means, 4) what “the external
2
2 The appellant has submitted a terminal disclaimer (filed
May 24, 2000, paper no. 8) to overcome a provisional obviousness-
type double patenting rejection (office action mailed
December 22, 1999, paper no. 5, page 5) over copending
application no. 09/157,477, now U.S. 6,321,828 to
Pleschiutschnigg, but this terminal disclaimer has not yet been
entered on the face of the file.
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