Ex Parte MEYER - Page 11




          Appeal No. 2000-0584                                                        
          Application No. 08/845,673                                                  


               For the reasons discussed above in connection with claim 59,           
          the German reference itself would have suggested an abrasive                
          coating having a maximum radial thickness of 3 mm.                          
               In addition, the presence of the bronze ring in the admitted           
          prior art grinding disk would have suggested the use of bronze to           
          make the corresponding metal strip 1 in the German disk to gain             
          the self-evident advantages of this material.                               
               Thus, the differences between the subject matter recited in            
          claim 60 and the prior art are such that the subject matter as a            
          whole would have been obvious at the time the invention was made            
          to a person having ordinary skill in the art.                               
               Claims 53, 54, 57 and 58 are rejected under 35 U.S.C. § 112,           
          first paragraph, as being based on a specification which fails to           
          comply with the written description requirement of this section             
          of the statute.                                                             
               The test for determining compliance with the written                   
          description requirement is whether the disclosure of the                    
          application as originally filed reasonably conveys to the artisan           
          that the inventor had possession at that time of the later                  
          claimed subject matter, rather than the presence or absence of              
          literal support in the specification for the claim language.  In            
          re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.              

                                         11                                           





Page:  Previous  2  3  4  5  6  7  8  9  10  11  12  13  14  15  16  Next 

Last modified: November 3, 2007