Appeal No. 95-3860
Application No. 08/109,732
Instead, the examiner has rejected the appealed claims under
35 U.S.C. § 101; 35 U.S.C. § 112, first paragraph; and 35
U.S.C. § 112, second paragraph.
We reverse.
Regardless of the statutory basis referred to in the
rejections, it is apparently the examiner's concern that the
appealed claims are so broadly drafted that they cover
embodiments which may be inoperable. Specifically see the
answer at pages 5 and 6. Appellants, however, correctly state
the law that the possibility of inclusion of inoperative
embodiments does not prevent allowance of broad claims. See
appellants' substitute brief at page 8. Further, the examiner
should be aware that it is not the function of patent claims
to specifically exclude possibly inoperative embodiments. In
re Geerdes, 491 F.2d 1260, 1265, 180 USPQ 789, 793 (CCPA
1974). As set forth by the court in Geerdes, it is possible
to argue that process claims encompass inoperative embodiments
"on the premise of unrealistic or vague assumptions," but that
is not a valid basis for rejection.
At the oral hearing, the Board raised the issue as to
whether or not the "and/or" language that appears in line 8 of
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