Appeal No. 97-1871
Application 08/325,847
The examiner does not specify what "the ratio range" is, but it appears from the final rejection and the
arguments in appellant's brief and the examiner's answer that this expression is understood by appellant
and the examiner to apply to three claimed ratio ranges, i.e.:
(1) the range of the ratio of the radius after tumbling to the diameter of the needle recited in claim 1, and
((2) the ranges of the ratio of the particle diameter of the second (burnishing) medium to the diameter
of the surgical needle recited in claims 4 and 30.
With regard to the question of lack of enablement, on which the rejection is ostensibly based,
the scope of the claims must bear a reasonable correlation to the scope of enablement provided by the
specification. In re Vaeck, 947 F.2d at 495, 20 USPQ2d at 1444-45. In other words, there must be
sufficient disclosure to teach those of ordinary skill how to make and use the invention as broadly as it is
claimed. Id.
Whether the disclosure of species within a range is sufficient to enable one of ordinary skill to
make and use subject matter within the scope of the range is dependent on the predictability of the
effect of changes in the subject matter. Thus, as stated in In re Fisher, 427 F.2d 833, 839, 166 USPQ
18, 24 (CCPA 1970):
In cases involving predictable factors, such as mechanical or electrical elements, a single
embodiment provides broad enablement in the sense that, once imagined, other
4(...continued)
in footnotes 19 and 20 of In re Vaeck, 947 F.2d 488, 492, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
They apparently have been replaced by MPEP § 2164.08.
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