Appeal No. 95-0537
Application No. 08/077,709
USPQ2d at 1583 (the declaration offers factual evidence in an
attempt to explain why one of ordinary skill in the art would
have understood the specification to describe the language at
issue). Therefore, we agree with the examiner that appellants
have failed to establish that the specification, as originally
filed, would have conveyed with reasonable clarity to one
having ordinary skill in the art that appellants were in
possession of the invention now claimed, namely, a film "of at
least one micron square." The new matter rejection under 35
U.S.C. § 112, first paragraph, is affirmed.
Rejection under 35 U.S.C. § 112, second paragraph
Claims 1-9 are rejected under 35 U.S.C. 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
applicants regard as the invention. Specifically, the
examiner regards the phrase "preferential direction" as being
ambiguous and "high temperature superconductive film" as being
indefinite.
According to the examiner, it is unclear what “direction”
is “preferential” (Answer, p.6). We disagree. One having
ordinary skill in the art would have understood that
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