Appeal No. 2005-2686 Application No. 09/879,823 Unfortunately, the Board in the related appeal relied on the same portions of Von Kohorn cited by the examiner that were found to be deficient. A subsequent review of Von Kohorn finds that Von Kohorn supports the rejection for reasons noted in the original decision in this case and for reasons discussed above. Appellants argue that the Board has inconsistently interpreted the phrase “predetermined number of times” for purposes of finding anticipation under 35 U.S.C. § 102(b) and lack of written description under 35 U.S.C. § 112. Appellants assert that the Board failed to point to any express disclosure in Von Kohorn of limiting use of a coupon to a “predetermined number of times” [request, pages 18-20]. First, it is noted that the standards for support of a claimed invention under the first paragraph of 35 U.S.C. § 112 and for disclosure of the invention by the prior art are not the same. As was discussed in the original decision, appellants’ specification does not provide support for the breadth of the phrase “predetermined number of times,” but the phrase is met by the number one. Since the printed coupons in Von Kohorn can only be redeemed one time, Von Kohorn discloses the invention when given its broadest interpretation which is also consistent with 5Page: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007