Appeal No. 96-1313
Application 08/202,536
(Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315, 203 USPQ
245, 256 (CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189,
197 USPQ 227, 230 (CCPA 1978); In re Pearson, 494 F.2d 1399,
1405, 181 USPQ 641, 646 (CCPA 1974). Appellants’
specification discloses that if the concentration of reducing
agent in the bath is too high, the stability of the bath is
significantly reduced (page 14, lines 5-9). Appellants have
not pointed out, and we do not find, any teaching that a high
concentration of reducing agent prevents the mediator ions
recited in appellants’ claim 10 from serving as mediator ions.
Appellants argue that Morgan does not disclose the order
of adding the ingredients to appellants’ bath which,
appellants state, is essential to appellants’ invention
(brief, page 8). This argument is not well taken because5
appellants’ claims do not require that the ingredients be
added to the bath in any particular order.
5In view of the indication in appellants’ specification
(page 11, lines 26-29) that the order of adding the
ingredients to the bath is critical, the examiner should
consider, in the event of further prosecution, rejecting
appellants’ claims on the ground that the claims, because they
fail to recite a critical feature of the claimed invention,
are not enabled by the specification. See In re Mayhew, 527
F.2d 1229, 1233, 188 USPQ 356, 358 (CCPA 1976).
-8-8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007