Appeal No. 97-1163
Application 08/200,044
The examiner’s position on complete or incomplete
claiming is also misplaced. There is no requirement that a
claim must recite every element that is needed to somehow
complete an actually operating device. In Hughes Aircraft Co.
v. United States, 215 USPQ 787, 796 (Ct. Cl. 1982), the Court
of Claims upheld the validity of claims drawn to a satellite
system but which did not recite a ground controller which was
necessary to make the system operate for its intended purpose.
The Court reiterated a previous statement from Hughes Aircraft
Co. v. United States, 640 F.2d 1193, 1197, 208 USPQ 785, 789
(Ct. Cl. 1980), that "it is not necessary to claim in a patent
every device required to enable the invention to be used." We
recognize no statutory basis for holding as unpatentable
claims which do not recite every "essential" element without
which the claimed invention would not or could not operate.
We follow the Court of Claims's stated position in Hughes
Aircraft Co., 640 F.2d at 1197, 208 USPQ at 789, that it is
not necessary to recite in a claim every element which may be
required in order to enable operation of the claimed
invention. For example, if a motor vehicle is claimed, it may
not be necessary to recite a steering device although a motor
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