Appeal No. 1999-0928
Application No. 08/334,952
The examiner has failed to meet the initial burden in that
no reasoning has been presented why the term “heat” would not
reasonably apprise those of ordinary skill in this art of its
scope (e.g., see Horvath, col. 11, ll. 4-26). The examiner has
also failed to present any reasons why one of ordinary skill in
this art, upon reading the specification, would be “unclear”
whether “heat” includes “excess heat” (Answer, page 11). The
term “heat,” used in its normal and accepted art-recognized
meaning, would include any production of heat energy, whether
small or “excess” (Brief, page 22; specification, page 2, ll.
16-31, and pages 22-23).
For the foregoing reasons and those stated in the Brief and
Reply Brief, we determine that the examiner has failed to
establish that the claimed subject matter in question would not
have reasonably apprised one of ordinary skill in this art of the
scope of the claims. Accordingly, the rejection based on the
second paragraph of 35 U.S.C. § 112 is reversed.
B. The Rejections under 35 U.S.C. § 101 and § 112, ¶1
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