Appeal No. 2000-0156
Application 08/531,023
denied, 118 S.Ct. 397 (1997). This same case indicates that the
scope of the claims must bear a reasonable correlation to the
scope of enablement provided by the disclosure.
The examiner’s “criticality” analysis under the first
paragraph of 35 U.S.C. § 112 rejection is misplaced. The
examiner cites In re Mayhew, 527 F.2d 1229, 1233, 188 USPQ 356,
358 (CCPA 1976). This case concerns a scope of enablement issue.
Because the earlier noted case law indicates that the scope of
the claims must bear a reasonable correlation to the scope of
enablement provided by the disclosure, the examiner’s position is
clearly misplaced. The recitation in independent claim 6 of the
center-line mean roughness in the range of 1 Fm to 20 Fm and the
more specific range of 2 Fm to 10 Fm in claim 8 are coextensive
with the recitation of these same values in the Summary of the
Invention at specification page 5, lines 3-8 and original claim 4
at pages 15 and 16 of the specification as filed.
Because the scope of the claimed invention is not broader in
scope than the disclosed invention but consistent therewith,
there is no issue that arises within the undue breadth or scope
of enablement case law cited by the examiner and the arguments
made by the examiner in the answer. Since the breadth of
enablement is commensurate in scope with the claimed invention,
3
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007