Appeal No. 97-1627 Page 7
Application No. 08/202,991
establishing a prima facie case of non-enablement. We turn to
his second reason.
The examiner’s second reason for rejecting the claims
under 35 U.S.C. § 112, ¶ 1, is that the claims fail to recite
features that the specification teaches are critical.
Although the examiner presents this reason in a rejection
under the second paragraph of section 112, (Final Rejection at
3-4), the language indicates that he is relying on the first
paragraph, which requires that claims be supported by an
enabling disclosure. See In re Mayhew, 527 F.2d 1229, 1232,
188 USPQ 356, 358 (CCPA 1976).2
The examiner begins his explanation by alleging, “[t]he
disclosure clearly indicates critical limitations for the
number of layers, L/W ratio, and total thickness.” (Final
Rejection at 3.) He ends it by concluding, “these claims are
2At the time of the answer, examiners were instructed
that “[a] feature which is taught as critical in a
specification and is not recited in the claims should result
in a rejection of such claim under the enablement provision
section of 35 U.S.C. 112.” Manual of Patent Examining
Procedure § 2164.08(c) (6th ed., Rev. 2, July 1996).
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