Appeal No. 2000-0391
Application No. 08/553,773
while reversing the examiner’s rejection under the same basis of
claims 2-4, 6-7, 11 and 27-28 (Decision, page 2).
Appellants request rehearing based on only one issue.
Appellants argue that “[t]he Board has found that all necessary
§ 112 first paragraph support exists for narrower dependent
claims (B)” and “[t]he broad claims [designated as “A”] are thus
logically shown and admitted to be supported and to meet all
statutory requirements” (Request, page 2).
Appellants’ argument is not well taken. It is well settled
that “the scope of the claims must bear a reasonable correlation
to the scope of enablement provided by the specification to
persons of ordinary skill in the art.” In re Fisher, 427 F.2d
833, 839, 166 USPQ 18, 24 (CCPA 1970)(see the Decision, page 8).
In an analysis of a rejection under the enablement requirement of
section 112, a relevant inquiry is “whether the scope of
enablement provided to one of ordinary skill in the art by the
disclosure is such as to be commensurate with the scope of
protection sought by the claims.” In re Moore, 439 F.2d 1232,
1236, 169 USPQ 236, 239 (CCPA 1971). What is necessary to meet
the enablement requirement is that the inventor “provide a
disclosure sufficient to enable one skilled in the art to carry
out the invention commensurate with the scope of [his] claims.”
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