Appeal No. 1999-2406
Application No. 08/825,256
The examiner's comments with respect to the term "cancel
out" (examiner's answer, pages 5-6) are based on an unreasonable
interpretation of the claim language in question and are not
based on how one skilled in the relevant art would interpret the
claims in light of the specification in its entirety.
The examiner also argues: "The specification does not make
any provision as to what 'collateral' effects of the surface
tension are to be minimized." (Id. at page 6.) The examiner
then alleges that "the surface tension itself does not need to
be minimized, but instead some unknown features, such as
spreadability, viscosity, thickness, etc., which as influenced
by the surface tension are to be minimized." (Id.) From our
perspective, however, one skilled in the relevant art would
understand from a reading of the specification, including the
discussion found in the "Description of the Related Art," what
the appellants mean by minimizing the "effects of surface
tension" and how to achieve such a result.
Accordingly, we also cannot uphold the examiner's rejection
on this ground.
In summary, we reverse the examiner’s rejections under 35
U.S.C. § 112, first paragraph, of claims 1 through 4, 10, 11,
20, and 21 as failing to comply with the written description
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007