Ex Parte RUSSO et al - Page 13
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Appeals 2006-2874 and 2006-2747
Applications 08/544,212 and 09/287,664
1 Claims 34-36 and 38 (2006-2684)
2 Claims 34-36 and 38 depend from claim 33 and do not call for the
3 presence of silicon oxide in the film. They stand or fall with claim 33.
5 Claim 37 (Appeal 2006-2684)
6 Claim 37 depends from claim 33 and reads:
7 The film of claim 33, further comprising a silicon oxide.
9 Claim 37, like application original claim 1, calls for silicon oxide and
10 is not limited to the silicon oxides of application original claim 11.
11 There is absolutely no doubt in our minds that had claim 37 been
12 presented in the application which matured into the patent sought to be
13 reissued that it too would have been rejected based on a lack of enablement.
14 More importantly, a member of the public studying the prosecution history
15 would immediately understand that Appellants are attempting to get back
16 that which was given up. That a film vis-à-vis a gaseous composition is
17 being claimed is of no moment given that the use of the gaseous composition
18 is to make a film. The lack of enablement rejection made during the original
19 prosecution would apply with equal force to a film made from the gaseous
20 composition of original application claim 1.3
further prosecution, we would suggest that claim 33 does not comply with
the written description requirement of the first paragraph of 35 U.S.C. § 112.
Use of a precursor of silicon oxide would appear to be a material element of
Appellants’ invention. No film appears to be described which would not
include silicon oxide.
3 We note that the Examiner has not rejected claim 35 for lack of
enablement. This fact does not undermine the Examiner’s recapture
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Last modified: November 3, 2007