Appeal No. 2002-1919 Page 4
Application No. 09/266,376
Rather than reiterate the positions of the examiner or the appellants in toto, we
address the main point of contention therebetween. The examiner asserts, "[r]egarding
claim 1, the originally filed specification fails to disclose a semiconductor device
operating at temperature equilibrium and in a pulse mode. The remaining claims are
included due to dependency." (Examiner's Answer at 3.) The appellants argue, "the
specification . . . on page 19 explicitly discloses a pulse power device operating at
temperature equilibrium." (Appeal Br. at 4.)
“Analysis begins with a key legal question -- what is the invention claimed?”
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). Here, independent claim 1 specifies in pertinent part the following
limitations: "a semiconductor device, operating at temperature equilibrium and in a pulse
mode, the pulse mode comprising an on period and an off period. . . ."
Having ascertained what subject matter is being claimed, we turn to the rejection.
Although the examiner states that the claims "are rejected under 35 U.S.C. 112, second
paragraph, as being indefinite," (Examiner's Answer at 3), his assertion that "the
originally filed specification fails to disclose a semiconductor device operating at
temperature equilibrium and in a pulse mode," (id.), is worded in terms of a rejection
under 35 U.S.C. § 112, first paragraph, as lacking an adequate written description. To
address this inconsistency, “[w]e state at the outset exactly what is meant by the
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007