Appeal No. 1999-2328 Page 4
Application No. 08/485,492
(1) Under the first paragraph as not being described in such a manner as
to reasonably convey that the applicant was in possession of the claimed
invention at the time the application was filed.
(2) Under the first paragraph as not being described in such full, clear,
concise and exact terms as to enable any person skilled in the art to make
and use the same.
(3) Under the second paragraph as failing to particularly point out and
distinctly claim the subject matter which the appellant regards as the
invention.
As we understand the examiner’s position, all three of these rejections are based upon
the premises that the original disclosure was inadequate and the amendment filed by
the appellant in an effort to overcome the rejections is “virtually all new matter” (Paper
No. 19, pages 2-5).
We first point out that all of the claims under appeal were original claims, and
therefore constitute part of the original disclosure (claims 7 and 11 were amended to
correct minor errors). Our evaluation of the original disclosure leads us to conclude that
it provides sufficient description regarding the structure and operation of the invention
as recited in claims 1, 2, 6-8 and 11 to enable one of ordinary skill in the art to make
and use the invention.
Using the language of claim 1 as a guide, we are of the view that it is clear from
Figures 1-4 as originally filed, and from the explanations of the prior art and the present
invention set out in the specification as originally filed, that the application discloses a
moving table system comprising several relatively movable table elements. At least one
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