Appeal No. 2002-0652
Application No. 08/465,072
disclosed but unclaimed subject matter. Appellant refers to the
examiner's discussion of terms such as "can be" and "may be" in
the disclosure. Appellant has taken this discussion out of
context. The examiner merely points out such terms as evidence
that the disclosure is unclear as to how the elements actually
are connected.
Appellant (Brief, pages 14-16 and 23-26, and Reply Brief,
pages 11-12 and 107-108) asserts that the examiner has not
considered the disclosure as a whole, pointing to "the large
number of recitations of the claim terminology in the
specification" (Brief, page 15). Appellant (Brief, page 15, and
Reply Brief, page 9) directs our attention to the Table of
Terminology Occurrences. However, merely pointing to isolated
words scattered throughout the specification does not describe
the invention claimed as a combination of elements, functions,
and interconnections, any more than a dictionary provides written
description support for a book where words are used in
combination to provide a certain meaning. That various words
appear several times does not speak to how the elements are
connected nor how they function together.
In a related argument, appellant insists (Brief, pages 56-
58) that the examiner requires verbatim recitation of
terminology, which is contrary to the law. Nevertheless, it is
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007