Appeal No. 2000-0019
Application 08/977,451
advantage of not requiring any treatment of the microspheres in order to obtain coatings
with good physical-mechanical properties” (lines 14-17). On page 6, the invention is
said to be superior as “one can obtain finished coating[s] with good physical-mechanical
properties without using complicated apparatus[es] or having to take burdensome
measures, such as pretreating the hallow [sic] microspheres” (lines 4 – 8). Thus, we
find that the limitation of untreated microspheres is adequately described in the as-filed
specification.
We therefore reverse this rejection.
§112, Second Paragraph
Claims 1 – 6 stand rejected under 35 U.S.C. §112, second paragraph, as being
incomplete for omitting essential steps, such omission amounting to a gap between the
steps.
More specifically, the Examiner states that the step of the “treatment not applied
to the microspheres prior to contact with the polyolefin composition” is missing.
(Examiner’s Answer, page 5, lines 15-16). The Examiner’s primary concern is that no
boundaries have been set for excluding an undefined process, which “cons titutes a
clear failure to interrelate essential elements” (Examiner’s Answer, page 6, lines 3 -4).
The Appellants state that they are under no obligation to provide “any disclosure
regarding the means by which such microspheres could be treated with a polyolefin
chain degradation agent, as such treatment is not within the scope of the claimed
invention” (Appeal Brief, page 8, lines 17 – 20).
We agree with the Appellants. It is not necessary that the claims recite a “non-
step” of avoidance in detail. While we understand the Examiner’s concern about setting
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