Appeal 2006-1543
Application 10/239,769
The specific matters on appeal are as follows:
1. The objection made under 35 U.S.C. § 132 to the Amendment entered
July 23, 2004.1,2
2. The rejection of claims 15, 21, 30-34, 36, and 37 under 35 U.S.C.
§ 112, ¶ 1, as lacking written descriptive support; and
3. The rejection of claims 15-20 and 30-32 under 35 U.S.C. § 103(a) as
unpatentable over Lehtinen in view of Soremark.
Based on our review of the issues as presented in the Answer, Brief,
Reply Brief and the evidence and arguments relied upon therein, we sustain
the objection under 35 U.S.C. § 132 and the rejection under 35 U.S.C. § 112,
¶ 1. We, however, do not sustain the rejection under 35 U.S.C. § 103(a).
Pursuant to our authority under 37 C.F.R. § 41.50(b), we extend the
35 U.S.C. § 112, ¶ 1 rejection to claims other than those rejected by the
Examiner. Our reasons follow.
OPINION
New Matter in the Specification and Claims
As the objection under 35 U.S.C. § 132 and the rejection under
35 U.S.C. § 112, ¶ 1, are related issues and are argued together under the
same heading in the Brief (Br. 3-9) we consider them together.
1 The Amendment was originally filed on May 17, 2004 and was entered
pursuant to the Request for Continued Examination filed July 23, 2004.
2 Because the objection relates to new matter in the specification and is
combined with a rejection of claims under 35 U.S.C. § 112, ¶ 1, written
description, the objection is reviewable on appeal. See MPEP §
2163.06(II)(8th ed. Rev. 3, Aug. 2005).
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007