Appeal No. 2002-0741
Application No. 08/935,348
regarding the merits of these rejections. Appellants’ position
relies in part on the declaration under 37 CFR § 1.131 and
attached exhibits filed November 1, 1999 (Paper No. 7).
DISCUSSION
Rejection (a): the rejection of claims 1-20 under 35 U.S.C. §
112, first paragraph
In rejecting claims 1-20 as being based on a disclosure that
is not enabling, the examiner considers (answer, pages 3-4) that
. . . [a]t the most, dimensions, weights,
concentrations, symmetrical patterns, a hot melt
adhesive as set forth at [various places in the
specification] . . . [are] critical or essential to the
practice of the invention, but not included in the
claim(s) . . . [, therefore the claims are] not enabled
by the disclosure. See In re Mayhew, 527 F.2d 1229,
188 USPQ 356 (CCPA 1976). At the very least . . . the
description of the invention . . . [in the
specification] is unclear and inconsistent with regard
to what structure at a minimum is required.
We comprehend this rejection to be based on the examiner’s
view that certain features that are disclosed by appellants in
the specification as being critical to the invention are not
included in the claims. As we understand it, the examiner
considers that the claims are based on a nonenabling disclosure
because appellants have not taught how to achieve the desired
effect of the invention (i.e., a disposable absorbent article
that may be securely adhered to a user’s skin, yet releasable
4
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