Appeal 2007-2236
Application 10/991,738
1 261 U.S. 45 (1923); Webster Loom Co. v. Higgins, 105 U.S. 580 (1881). On
2 the other hand, if the critical current density is not significant, then maybe
3 Rupich is not entitled to a patent under § 103. Cf. KSR Int’l Co. v. Teleflex
4 Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007); Graham v. John Deere Co.
5 of Kansas City, 383 U.S. 1 (1966). The scope of any patentable invention
6 will have to be worked out in further prosecution.
7
8 F. Conclusions of law
9 Since the claims are indefinite, we do not reach the Examiner's § 103
10 rejections.
11 The claims on appeal fail to comply with the requirements of the
12 second paragraph of 35 U.S.C. § 112.
13 The claims on appeal fail to comply with the enablement requirements
14 of the first paragraph of 35 U.S.C. § 112.
15 On the record before us, Rupich is not entitled to a patent containing
16 claims 89-96.
17
18 G. Decision
19 ORDERED that the decision of the Examiner rejecting
20 claims 89-96 over the prior art is vacated.
21 FURTHER ORDERED that our § 112 rejections are designated
22 as new rejections. 37 CFR § 41.50(b) (2006).
23 FURTHER ORDERED that our decision is not a final agency
24 action.
18
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