Appeal No. 1997-0467
Application 08/318,019
Claim 17 is now rejected under 35 U.S.C. § 112, first paragraph, as the
claimed invention is not described in such full, clear, concise and exact
terms as to enable any person skilled in the art to make and use the same,
and/or for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention.
The basis for this rejection is somewhat unclear. For example, according to the examiner,
claim 17 does not “particularly point out and distinctly claim the subject matter which
applicant regards as the invention” even though the examiner has not entered a rejection
under 35 U.S.C. § 112, second paragraph.
It is further unclear whether this rejection is predicated on the description or
enablement requirement, or both the description and enablement requirements, of
35 U.S.C. § 112, first paragraph. The examiner expresses concern respecting the “open
ended” claim language in claim 17 “at a temperature above 85EC.” Nonetheless, claims
15, 16 and 18 through 22 also include “open ended” language (“at a temperature above
70EC”), and the examiner has not entered a rejection of those claims under 35 U.S.C. §
112, first paragraph. For this reason, we find that the examiner's rejection is internally
inconsistent. The examiner refers to In re Fisher,
427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) for the principle that “the scope of the
claims must bear a reasonable correlation to the scope of enablement provided by the
specification to persons of ordinary skill in the art.” However, the examiner has not
adequately explained why Fisher controls the outcome of this case. On this record, the
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007