Appeal No. 2004-0146
Application 09/851,911
addition, we have refused to sustain the examiner’s rejection
of claims 11 and 12 under 35 U.S.C. § 103(a) based on Ellis.
However, we have sustained the examiner’s rejection of claim 15
under 35 U.S.C. § 103(a) based on Ellis in view of Berger, and
that of claim 16 under 35 U.S.C. § 103(a) based on Ellis alone.
Thus, the decision of the examiner is affirmed-in-part.
In addition, we REMAND this application to the examiner to
consider whether or not the subject matter currently set forth in
claims 1, 3, 4 and 11 through 14 on appeal has adequate support
under 35 U.S.C. § 112, first paragraph, in appellant’s originally
filed disclosure. More particularly, it is the open-end ranges
regarding “a nominal length of 3/16 inch or greater” and “a
nominal width of 1/8 inch or greater” (emphasis added) set
forth in independent claim 1, as amended in Paper No. 9, filed
August 26, 2002, that are of primary concern. No such open-ended
ranges appear to be set forth in appellant’s originally filed
specification and claims. We also REMAND for the examiner to
again consider the teachings of U.S. Patent No. 3,932,950 to
Taber under either 35 U.S.C. § 102(b) or § 103(a). While it may
15
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