Appeal No. 95-3481
Application 08/017,977
desired result of an aluminum oxide having an oxygen to aluminum
atomic ratio between 1.3 and 2.0" (answer, page 2). We reverse
this rejection for reasons that follow.
OPINION
The examiner’s only rejection is made under 35 U.S.C. § 112,
second paragraph (answer, page 2). However, the language
employed by the examiner in this rejection leaves doubt as to the
exact ground of the rejection. Appellants note that the language
used by the examiner seems to refer to the standard for
enablement under section 112, first paragraph, i.e., the use of
the term “undue experimentation” on page 2 of the Final Rejection
(Paper No. 17 dated May 11, 1994, see appellants’ brief, the
paragraph bridging pages 2-3). Appellants present arguments in
the brief against the rejection based on either the first or
second paragraphs of 35 U.S.C. § 112. The examiner has failed to
give any reasoning to support a theory of “undue experimentation”
(see In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed.
Cir. 1988)). Similarly, the examiner has used the language in
the answer that “essential steps” are “absent form [sic, from]
the claims” (answer, page 3). Unclaimed essential matter should
be rejected under the first paragraph of section 112 (see Manual
3
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