Appeal No. 1998-2151
Application No. 08/580,823
challenge to the adequacy of the disclosure for these claims.
We agree with the examiner that in the disclosure “there are
no details . . . how to ‘set up’ the given equations,”
“[t]here are no details of how to read the tangential magnetic
field (which is needed for the set up),” “[t]here are no
details of how to set
up the second equation, which requires non-dissipative
readings
. . . , ” and “[t]here are no details of how to solve the
particular types of equations described.” While the evidence
submitted by appellants in the appendices to the brief offers
interesting background reading for the claimed invention, it
does not adequately address the questions raised by the
examiner concerning the lack of disclosure for the
specifically claimed equations. Thus, the rejection of claims
2 through 8 and 11 is sustained because to the skilled artisan
the scope of these narrow claims does not bear a reasonable
correlation to the scope of enablement provided by the
specification. Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d
1361, 1365, 42 USPQ2d 1001, 1004 (Fed. Cir. 1997).
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