Ex Parte Lakkapragada et al - Page 6

                Appeal 2006-2870                                                                              
                Application 10/401,509                                                                        
                definite and limited class of measurement devices and resist properties that                  
                provide support for the claimed species within the guidelines set by Petering                 
                and Sivaramakrishnan decisions.  We do not agree.  As pointed out by the                      
                Examiner (Answer 6), Appellants’ arguments to the contrary                                    
                notwithstanding, the original disclosure states that the measurement devices                  
                and resist properties are not limited to those listed as examples                             
                (Specification 10:21-22 and 16:24-29).                                                        
                      Lastly, to whatever extent Appellants are suggesting (Reply Br. 5) that                 
                the question of whether Appellants’ disclosure renders the claimed invention                  
                obvious is an issue to be considered in this appeal, we are in total agreement                
                with the Examiner’s position as articulated at page 7 of the Answer.  As                      
                summarized by the Examiner, even though various portions of Appellants’                       
                specification and the incorporated references may individually disclose                       
                various aspects of the claimed invention, there is no disclosure which                        
                supports the claimed invention as a whole.  As stated by the Federal Circuit                  
                in Lockwood v. American Airlines Inc., 107 F.3d 1565, 1571, 41 USPQ2d                         
                1961, 1966 (Fed. Cir. 1997), “[e]ntitlement to a filing date does not extend                  
                to subject matter which is not disclosed, but would be obvious over what is                   
                expressly disclosed.  It extends only to that which is disclosed.”  The Court                 
                continued by stating “[i]t is not sufficient for purposes of the written                      
                description requirement of Section 112 that the disclosure, when combined                     
                with the knowledge of the art, would lead one to speculate as to                              
                modifications that the inventor might have envisioned, but failed to disclose.                
                      In view of the above discussion, it is our opinion that, under the                      
                factual situation presented in the present case, the statutory written                        
                description requirement has not been satisfied because Appellants were                        

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