Appeal 2007-1647
Application 10/631,841
case-by-case basis.” Eiselstein v. Frank, 52 F.3d 1035, 1039 (Fed. Cir.
1995) (citation omitted).
After carefully considering the evidence before us, we will reverse the
Examiner’s rejection of claims 1-42 as failing to comply with the written
description requirement for essentially the same reasons argued by Appellant
in the Brief. In particular, we note the Examiner has acknowledged that the
coupling ratio is easily derived as CR = CHC/(CHC + CP) (See Answer 8, ¶3).
The Examiner has further acknowledged that “it is clear that if the large
capacitor CHC is much larger than the parasitic capacitor Cp then the
coupling ratio CR will [approach] 1.” (Id.). We note that Appellant need not
include information in the disclosure that is already known and available to
the experienced public. See Space Systems/Loral, Inc. v. Lockheed Martin
Corp., 405 F.3d at 987. Therefore, we conclude that Appellant has provided
sufficient detail in the Specification to satisfy the statutory requirements and
convey with reasonable clarity to those skilled in the art that the inventors
were in possession of the invention at the time of filing.
35 U.S.C. § 112, second paragraph
We consider next the Examiner’s rejection of claims 1-42 as being
indefinite under 35 U.S.C. § 112, second paragraph, for failing to
particularly point out and distinctly claim the subject matter which Appellant
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013