Appeal No. 94-4150
Application 07/911,354
We add the following comments for emphasis and completeness.
The examiner’s burden of proof in calling into question the
enablement of an applicant’s disclosure requires that the
examiner advance acceptable reasoning inconsistent with
enablement. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ
561, 563 (CCPA 1982). In the case before us, the examiner has
advanced no such acceptable reasoning. In particular, the mere
fact that the independent claims on appeal are directed to a
method of establishing contact between fluids and solid materials
generally is not, in and of itself, inconsistent with enablement
as the examiner seems to believe. It follows that we discern
little if any merit in the examiner’s position that the here
rejected claims are not enabled within the meaning of the first
paragraph of § 112.
Similarly, the examiner is incorrect in believing that the
breadth of the rejected claims renders them offensive to the
second paragraph of § 112. It has been long established that
breadth is not indefiniteness. In re Gardner, 427 F.2d 786, 788,
166 USPQ 138, 140 (CCPA 1970). As for the examiner’s view that
the independent claim term ?substantially? renders the appealed
claims unclear, we agree with the appellant that one with
ordinary skill in the art would have a reasonable appreciation of
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007