Appeal No. 1996-3977
Application 08/232,627
J.F. Cordaro and C. Stein (Cordaro), “Molecular Engineering Of Pigments For Degradation-Resistant
Thermal Control Coatings,” AIAA-92-2167-CP, AIAA Materials Specialist Conference - Coating
Technology for Aerospace Systems, Dallas, Texas, 1992.
The examiner has advanced the following grounds of rejection on appeal: claims 1 through 13
are rejected under 35 U.S.C. § 112, first paragraph, enablement requirement; claims 16 and 19 are
rejected under 35 U.S.C. § 102(b) as being anticipated by Shai; and claims 1 through 18 and 20 are
rejected under 35 U.S.C. § 103 as being unpatentable over Shai in view of Cordaro. We affirm the 3
ground of rejection under § 102(b) and the ground of rejection under § 103 with respect to claim 16,
and reverse the ground of rejection under § 112, first paragraph, and the ground of rejection under §
103 with respect to claims 1 through 15, 17, 18 and 20.
Rather than reiterate the respective positions advanced by the examiner and appellants, we
refer to the examiner’s answer and supplemental answer, and to appellants’ principal, reply and
supplemental reply briefs for a complete exposition thereof.
Opinion
We have carefully considered the record before us, and based thereon, find that we cannot
sustain any of the grounds of rejection under 35 U.S.C. § 112, first paragraph, enablement
requirement. It is well settled that under § 112, first paragraph, the examiner has the burden of4
3In the final rejection of April 4, 1995 (Paper No. 5), the examiner rejected claims 1 through 13, 16,
17, 19 and 20 under § 112, first paragraph, and withdrew this ground of rejection with respect to
claims 16, 17, 19 and 20 in the answer (page 2). The examiner further rejected claims 16, 19 and 20
under § 102(b) in said Office action, and withdrew this ground of rejection with respect to claim 20 in
the answer (page 2). From the statements on page 2 of the answer and the statement of the rejection
and supporting rationale on pages 9-10 of the answer, we find that the statement that “[c]laims 16-19
are rejected” on page 9 of the answer should read “[c]laim 16 and 19 are rejected.” Thus, we cannot
agree with appellants (reply brief, page 4), that the examiner has included claims 17 and 18 in this
ground of rejection. Indeed, the examiner made no statement in his answer to this affect in the same
manner that he clearly indicated on page 15 of the answer that claims 16 and 20 were included in the
ground of rejection under § 103.
4The examiner cited “M.P.E.P. [Manual of Patent Examining Procedure] §§ 706.03(n) and
706.03(z)” (answer, page 3). These sections are entitled “Correspondence of Claim and Disclosure”
and “Undue Breadth,” respectively, and last appeared in the Sixth Edition of the MPEP (Jan. 1995).
See Rev. 1 of the Sixth Edition of the MPEP (Sept. 1995). We observe that both of these sections
remained unchanged since at least Rev. 6 of the Fifth Edition of the MPEP (Oct. 1987). Neither section
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