Appeal No. 2006-1820
Application No. 08/889,440
by the examiner. Note MPEP § 706.02 I, which confines prior art rejections “strictly to the best
available art.” Merely cumulative rejections should be avoided.
Turning, first, to the rejection under 35 U.S.C. § 112, second paragraph, the examiner
contends that the phrase, “physical condition” in claims 1, 16, 20, 23, and 24, is “ambiguous”
(answer-pages 28 and 49).
Since the examiner never indicates why the phrase “physical condition” is “ambiguous,”
merely asserting so, the examiner has clearly not established any reasonable basis for concluding
that the claims are indefinite under 35 U.S.C. § 112, second paragraph. Accordingly, we will not
sustain the rejection of claims 1, 16, 20, 23, and 24 under 35 U.S.C. § 112, second paragraph.
With regard to the rejection of all of the claims under 35 U.S.C. § 112, first paragraph,
the examiner employs exactly the same reasoning for both grounds of inadequate written
description and non-enablement:
As per claims directed at “formed particles” (claims 1, 3-9 and 11-31),
Examiner has reviewed pp. 31-33 of the specification. The
specification only describes the composition of the combined
particles; but, does not describe how the components of the formed
(combined) particles are formed, as would be required to make and/
or use the invention. A reader would have to reinvent the invention.
The meaning is not clear. The claims recite “formed particles”. The
particles therefore would have to be combined somehow during
the course of the simulation. How is this done? It would constitute
undue experimentation for a reader of any issued patent to make and/or
use the claimed invention (answer-pages 48 and 49).
As the examiner is no doubt well aware, the written description requirement is separate
from the enablement requirement of 35 U.S.C. § 112; it is not necessary that the claimed subject
matter be described identically but that the originally filed disclosure convey to those skilled in
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