Appeal No. 2002-0652
Application No. 08/465,072
what he means by the "product" or "making" step; instead, he
leaves it for us to guess at what is intended. While in some
cases examiners may guess at what is meant by "products," the
disclosure should speak for itself. Thus, there is a prima facie
case of lack of written description.
Appellant (Reply Brief, pages 99-104) points to particular
occurrences in the specification of terminology, such as "oil,"
"mineral," and "vehicle" as support for the claimed oil, mineral,
and vehicle products. The skilled artisan would consider an oil
product to refer to something produced from oil and a vehicle
product to refer to something produced by a vehicle. The
referenced portions, though, merely state that the invention may
be used by companies involved in fields dealing with oil and
minerals or as a display for a vehicle; they do not clearly
define, for example, an "oil product," a "mineral product," or a
"vehicle product." Thus, the referenced portions of the
disclosure do not answer the question as to what the various
products are. Further, the cited portions of the specification
provide no indication as to what the additional "making steps"
would be.
Appellant argues (Brief, pages 26-30, and Reply Brief, pages
60-61) that the § 112, first paragraph, rejections regarding
product terminology are improper because 35 U.S.C. § 271(g)
24
Page: Previous 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 Next
Last modified: November 3, 2007