Appeal No. 95-2773
Application 07/937,953
being unpatentable over Japanese Kokai Patent Publication No. 60-83908, published May 13, 1985,3
or published European Patent Application 0 311 186, published April 4, 1989, in view of Japanese
Kokai Patent Publication No. 2-125214, published May 14, 19904 (answer, pages 3-6). 5
The grounds of rejection under 35 U.S.C. § 112 involve the claim language “an outermost layer
comprising a UV-curing resin having” the specified Young’s modulus and “change of cure shrinkage
degree.”6 We first consider the examiner’s contentions with respect to the meaning of the claim term
“resin”, which issue of definiteness we must resolve before considering the issues raised by the examiner
under § 112, first paragraph. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971). We have reviewed the term “resin” in light of appealed claim 1 as a whole as well as in
view of the specification as to whether this claim in fact sets out and circumscribes a particular area with
a reasonable degree of precision and particularity as required by the statute. Id. We find that the
specification sets forth the phrase “any resin which has the above [Young’s modulus and “change of
cure shrinkage degree”] properties” (page 3, lines 15-16) such that one skilled in the art would have
read the criticized term “resin” in claim 1 as inclusive of polymers and copolymers. Accordingly, we
reverse the ground of rejection under § 112, second paragraph, because we conclude that one
skilled in this art would reasonably understand from the specification what is claimed by the use of the
term “resin.”
Turning now to the ground of rejection under § 112, first paragraph, enablement, the examiner
has the burden of providing a reasonable explanation, supported by the record as a whole, why the
assertions as to the scope of objective enablement set forth in the specification with respect to the “UV-
curing resin” is in doubt, including reasons why the description of the invention in the specification would
3 We refer herein to the translation of Japanese Kokai Patent Publication No. 60-83908 prepared for
the PTO by FLS, Inc., in May, 1995. A copy of this translation is attached to our decision.
4 We refer herein to the translation of Japanese Kokai Patent Publication No. 2-125214 prepared by
the PTO on April 27, 1995. A copy of this translation is attached to our decision.
5 The examiner has withdrawn the ground of rejection of appealed claim 5 under 35 U.S.C. § 112,
fourth paragraph (answer, page 7).
6 The original claim and specification specifies the unit for the Young’s modulus as kg/mm2 units while
appealed claim 1 as it stands of record and copied in the brief specifies the unit as “kg/mm2”. We will
use the former unit herein.
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