Appeal No. 1998-2288
Application 08/600,150
For the foregoing reasons, we determine that the examiner
has not met the initial burden of establishing that the claim
language fails to reasonably apprise those of skill in the art
of its scope. Accordingly, the rejection of claims 52, 58,
74, 76 and 78 under 35 U.S.C. § 112, ¶2, is reversed.
B. The Rejection under 35 U.S.C. § 112, ¶1
Claims 52-63 and 65-79 stand rejected under 35 U.S.C. §
112, ¶1, for failing to provide an enabling disclosure
(Answer, pages 4-5). The examiner states that, since
appellants argue that one of ordinary skill in the art could
not predict whether the mixed metal oxides of the prior art
would function as pigments, the amount and type of examples
necessary to support broad claims increases due to the
unpredictability of the art (Answer, page 5). The examiner
further states that “[c]laims broad enough to cover a large
number of compositions that do not exhibit the desired
properties fail to satisfy the requirements of 35 USC 112.”
Id.
Appellants argue that the examiner has not met the
initial burden of proof and has no basis for concluding that
persons of ordinary skill in the art, armed with appellants’
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