Appeal No. 2005-0181
Application No. 09/781,631
measured in a variety of ways, and the examiner refers to several
patents that indicate how the toughness is determined. Answer,
page 5.
In response, appellant argues that he is allowed to recite
the results of his testing without reciting the particulars of
the methods used to measure the toughness. Appellant also states
that support exists for the particular toughness value on page 11
of the specification, and that the toughness is compared with the
toughness values of a commercially available substance.1
Appellant argues that standards of testing are well known.2
Brief, pages 6-7.
We find that the comparison made on page 10 of the
specification is insufficient to overcome the examiner’s prima
facie case. The comparison does not indicate what toughness test
is used or what type of toughness is measured. Hence,
appellant’s assertions are not supported by evidence.
In view of the above, we therefore affirm the 35 U.S.C.
§ 112, second paragraph (indefiniteness) rejection of claims 41
and 43, and 48.
II. The 35 U.S.C. § 112, first paragraph (written description
requirement) rejection of claims 35, 36, 54, 56 and 66
We select claim 35, 36, and 54 for consideration in this
rejection.
The examiner’s position is set forth on page 4 of the
answer. The examiner states that appellant has failed to indicate
where support can be found for newly added claim limitations in
claims 35, 36, 54, 56, and 66.
1 We believe appellant meant to refer to page 10 of the specification.
2 Appellant indicates that the claims have a typo, and thus, “2,500”
should be “1,500”. In the event of continued prosecution, the
examiner, this issue needs consideration.
-4-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007