Ex Parte Kakui et al - Page 4


               Appeal 2007-2929                                                                             
               Application 10/615,389                                                                       

               Appellants’ Specification.  See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d                    
               1320, 1322 (Fed. Cir. 1989); In re Sneed, 710 F.2d 1544, 1548, 218 USPQ                      
               385, 388 (Fed. Cir. 1983).                                                                   
                      The Examiner argues that the Appellants’ disclosure is not enabling                   
               for the recited gain non-uniformities of “less than 25%” (claims 1, 5 and 7)                 
               and “less than 19%” (claims 4, 6 and 9) because those ranges encompass a                     
               gain non-uniformity of zero (Ans. 4-5).  That argument is not convincing                     
               because the Examiner has not established that either 1) one of ordinary skill                
               in the art could not, through no more than routine experimentation, have                     
               obtained with the Appellants’ claimed optical amplification module a zero                    
               gain non-uniformity, see In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d                        
               1510, 1513 (Fed. Cir. 1993), or 2) if a gain non-uniformity of zero is                       
               unachievable, one of ordinary skill in the art would have considered the                     
               broadest reasonable interpretation of the Appellants’ claims in view of the                  
               Appellants’ Specification to encompass an unachievable gain non-                             
               uniformity.1                                                                                 
                      The Examiner argues, regarding claims 8 and 10, that the frequency                    
               about which “wavelength bandwidth exceeds 50 nm” is centered can be zero                     
               or infinity, both of which are mathematically undefined (Ans. 4).  That                      
               argument is not persuasive because the Examiner has not established that the                 
               Appellants’ term “signal light”, given its broadest reasonable interpretation                

                                                                                                           
               1 The Examiner’s question “What is the scope of the claims?” (Ans. 9)                        
               pertains to claim clarity under 35 U.S.C. § 112, second paragraph, not                       
               enablement under 35 U.S.C. § 112, first paragraph.                                           

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