Appeal 2007-0170
Application 10/262,510
disclosure, as originally filed, within the meaning of 35 U.S.C. § 112, first
paragraph. On this record, we answer this question in the negative.
As indicated supra, the Appellants rely on the phrase “a distance in
the range of μ m to millimeters” recited in original claim 11 as written
descriptive support for the newly added limitation “. . . a distance of at least
1 μm ” in present claim 11. However, the newly added limitation clearly
embraces embodiments outside of the distance described in the application
disclosure as originally filed. In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d
1578, 1583 (Fed. Cir. 1996), citing In re Wertheim, 541 F.2d 257, 263, 191
USPQ 90, 97 (CCPA 1976). Specifically, as in Wertheim, 541 F.2d at 263-
64, 191 USPQ at 97, the phrase “. . . at least 1 μm” encompasses a distance
greater than millimeters which are the upper limit of the distance originally
recited and described in the application disclosure. The Appellants
nevertheless proffer no evidence that the upper limit of the distance
originally described (i.e., millimeters) is inherent in “. . . a distance of at
least 1 μm” as that limitation appears in present claim 11 (Br. 3-4).
Wertheim, supra.
Thus, based on this record, we concur with the Examiner’s finding
that claim 11, as written, lacks written descriptive support within the
meaning of 35 U.S.C. § 112, first paragraph.
35 U.S.C. § 102(e):
In rejecting claims 1, 3, 4, and 7 under 35 U.S.C. § 102(e), the
Examiner finds that Pisharody
discloses an apparatus (Figure 6C; Paragraph 0081) comprising:
two nanolaminate components comprising alternating metal and
insulator layers (Paragraphs 0058, 0073-0075, and 0080) facing
each other across a channel, as claimed, with pieces of
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