Appeal No. 95-0537
Application No. 08/077,709
Rejection under 35 U.S.C. § 112, first paragraph
Claims 1-6 and 8-9 are rejected under 35 U.S.C. § 112,
first paragraph, as being based on a non-enabling disclosure. 4
According to the examiner, the unpredictable nature of the
superconductor art, as it existed at the time appellants filed
their application, requires that the claims be limited to the
specific superconductors disclosed in the specification. See
In re Fisher, 427 F.2d 833, 837-38, 166 USPQ 18, 22 (CCPA
1970) ("the scope of the claims must bear a reasonable
correlation to the scope of enablement provided by the
specification to persons of ordinary skill in the art. . . .
In cases involving unpredictable factors, such as most
chemical reactions and physiological activity, the scope of
enablement obviously varies inversely with the degree of
unpredictability of the factors involved.").
However, relying on In re Angstadt, 537 F.2d 498, 502,
190 USPQ 214, 218 (CCPA 1976), appellants argue that it is
improper to limit the present claims to only those particular
4According to appellants, claims 1-6 and 8-9 which stand
rejected under 35 U.S.C. § 112, first paragraph, as being
based on a non-enabling disclosure do not stand or fall
together (Brief, p. 13).
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