Appeal No. 2004-0184
Application No. 09/837,824
limitations. The examiner’s conclusion that the subject matter
set forth in these claims would have been obvious at the time the
invention was made to a person having ordinary skill in the art
rests in large part on an implicit finding that Hand meets these
limitations. For the reasons explained above, this finding is
unsound. Accordingly, we shall not sustain the standing 35
U.S.C. § 103(a) rejection of claims 3, 5 through 8 and 10 as
being unpatentable over Hand, or the standing 35 U.S.C. § 103(a)
rejection of claims 2 and 9 as being unpatentable over Hand in
view of Glovak.
IV. New grounds of rejection
The following new grounds of rejection are entered pursuant
to 37 CFR § 1.196(b).
Claims 1 through 3 and 5 through 10 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
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