Appeal No. 2000-0287 Page 5
Application No. 08/663,300
details and the examiner has not advanced any explanation as to why this would not have been the
case.
Turning to the examiner's second basis for rejecting the claims for lack of enablement,
the examiner asserts that the claims are broader than the disclosure in the application and that,
consequently, one of ordinary skill in the art would not have been able to make and use the full
scope of the claimed invention from the appellant's disclosure, even if coupled with additional
information known in the art. In particular, the examiner asserts that none of the claims is
limited to "the [non-woven fabric] sheet having to have potential elongation higher than 100%
in a biased direction in combination with the other features" (answer, page 4). The examiner's3
concern appears to be rooted in the distinction between the claim language "in one direction"
(claims 1, 16 and 19, lines 2-3) and "in said one direction" (claim 13, line 9; claim 17, line 16)
and the disclosure in the specification (the substitute specification, page 3, lines 1-3; original
specification, page 2, lines 3-5) that the non-woven fabric has "a potential elongatability of
higher than 100% in a biased direction" (our emphasis).
We do not agree with the examiner that, in this instance, the claim language "in one
direction" in claims 1, 16 and 19 or "in said one direction" in claims 13 and 17 is broader than
the terminology "in a biased direction" used in the specification. In particular, we conclude
3While the examiner's first rejection (Paper No. 6, pages 2 and 3) referred to additional examples of the
originally filed claims being broader in scope than the underlying disclosure, these earlier-cited examples are
presumed not to be applicable to the claims before us on appeal, as the examiner's answer has not repeated them.
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