Appeal No. 1997-4287
Application No. 08/275,864
. . . [whereas] it is not clear as to what is meant by
aligned” (answer, page 4). Like the appellants, we perceive
no merit in the examiner’s position. When the criticized
claim language is analyzed in light of the appellants’
disclosure (e.g., see page 11 of the specification and Figure
3 of the drawing) as it must be (In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971)), there is ample basis for
concluding that the bounds of the here claimed subject matter
are distinct. In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471,
476 (CCPA 1975).
Under these circumstances, we cannot sustain the
examiner’s section 112, second paragraph, rejection of the
appealed claims.
As for the section 112, first paragraph, rejection, it is
the examiner’s position that “the [appellants’] disclosure is
enabling only for claims limited to particles having a
particular shape and crystal structure oriented with respect
to said shape” (answer, page 4). It is well settled that it
is the examiner’s burden to advance acceptable reasoning
inconsistent with enablement (as correctly observed by the
appellants in their brief). In re Strahilevitz, 668 F.2d
4
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