Appeal 2006-3366
Application 10/864,041
35 U.S.C. § 112, FIRST and SECOND PARAGRAPHS
We reject independent claim 19 under 35 U.S.C. § 112, first and
second paragraphs as failing to provide an enabling description and
additionally failing to particularly point out and distinctly claim the
invention. Since we find no corresponding structure, acts, or materials in
Appellant’s Specification, and find no corresponding disclosure identified by
Appellant in the Brief which corresponds to the “power electronics means,”
we are left to speculate as to what the corresponding “means” would be and
how those skilled in the art would make and use the claimed invention
without undue experimentation. Without corresponding subject matter, the
metes and bounds of independent claim 19 cannot be ascertained and cannot
be enabled.
DECISION
We have sustained the Examiner's prior art rejections with respect to
claims 1-6, 8-10, 12-18, and 20 on appeal. We have reversed the Examiner's
prior art rejection with respect to claim 19. Moreover, we have entered a
new ground of rejection under 37 C.F.R. § 41.50(b) for claim 19 as failing to
provide and enabling description under 35 U.S.C. § 112, first paragraph and
as failing to particularly point out and distinctly claim the invention under 35
U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (amended effective Sept. 13, 2004, by final rule notice 69
Fed. Reg. 49,960 (Aug. 12, 2004), 1286 Off. Gaz. Pat. Office 21 (Sept. 7,
2004)). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
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