Appeal No. 96-0088
Application No. 08/038,426
of ordinary skill in the art would not be apprised of the
scope of the claims containing these phrases.
The examiner has further rejected, as being indefinite,
appellants’ characterization of rhenium as being a non-noble
metal. We are persuaded by appellants’ evidence in exhibit B
that at least one authoritative source, The Condensed Chemical
Dictionary, does not include rhenium among the noble metals.
We further note that rhenium is not located in the same class
as the noble metals in the "Periodic Table of the Elements."
Based upon the above considerations, we find that the
examiner has failed to establish that one of ordinary skill in
the art would not be apprised of the scope of the claims set
forth above. Accordingly, the rejection of claims 1 and 4
through 27 under the second paragraph of 35 U.S.C. § 112 is
reversed.
The examiner has also rejected claims 3, 19, 23 and 25
under the first paragraph of 35 U.S.C. § 112 for lack of
enablement as there is no disclosure of non-noble metals. As
discussed above, it is the examiner’s position that rhenium is
a noble metal. As no other non-noble metals are disclosed,
the examiner concludes that in effect there is no disclosure
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007