Appeal No. 95-3936
Application 08/135,324
ordinary skill in the art at the time appellants' invention
was made to make the claimed invention. In re Glass, 492 F.2d
1228, 1232, 181 USPQ 31, 34 (CCPA 1974). 35 U.S.C. § 112,
first paragraph, requires a reasonable correlation between the
scope of what is claimed and the scope of enablement provided
by appellants' specification to the person of ordinary skill
in the art. In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438,
1444 (Fed. Cir. 1991); In re Fisher 427 F.2d 833, 839, 166
USPQ 18, 24 (CCPA 1970).
Although the examiner's statement of the rejection
and underlying rationale in support of the rejection are not
models of clarity, we understand the rejection to be founded
on the examiner's determination that although claim 10
utilizes the language "preventing said photoacid from being
neutralized", appellants' disclosure only describes the use of
nitrogen and water as being useful for that purpose. The
examiner reasons that the two disclosed "species" do not
provide an adequate basis for the scope of the claim language
of "preventing said photoacid from being neutralized." The
examiner opines that in light of the unpredictability in the
art, except for the disclosure of nitrogen and water as being
useful, it would have required undue experimentation for the
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