Appeal No. 1998-1063
Application 08/715,239
We have carefully considered the positions taken by the examiner and appellant with respect to
both grounds of rejection and find that the views expressed are essentially based on different
interpretations of the phrase “disposing a plurality of fusible elements on the surface of the substrate,”
and the related claim language “disposing first and second terminations at the respective ends of said
fusible elements” and “said fuse assembly clears by each of said plurality of fusible elements opening
substantially simultaneously,” which are, respectively, the second step, part of the third step and an
operational limitation on the structure of the fuse assembly as stated in the claimed method of
manufacturing a fuse assembly encompassed by representative appealed claim 12. The examiner’s view
of the requirement for “a plurality of fusible elements on the surface of the substrate” is represented by
the his statement, with respect to the ground of rejection under § 112, first paragraph, written
description requirement, that “[i]t is submitted that if the time at which a single fuse in a group of fuses
blows cannot be known with precision, then it would be highly improbable to have each fuse in the
group of fuses blow ‘substantially simultaneously’ to the others” (answer, page 7; emphasis supplied).
With respect to this same ground of rejection, appellant states that “[t]he specification clearly teaches
one of ordinary skill in the art that each of the multiple elements 14 opens simultaneously” (brief, page
6), and further states with respect to the ground of rejection under § 103, that “by using multiple fusible
elements in a single fuse assembly, each of the fusible elements is absorbed within a different area of arc
suppressant glass” (id., page 16; emphasis in original deleted).
It seems to us that when considered in light of the written description in the specification as
interpreted by one of ordinary skill in this art, see, e.g., In re Morris, 127 F.3d 1048, 1054-55, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997), including the drawings thereof, see, e.g., In re Wright, 866
F.2d 422, 423-25, 9 USPQ2d 1649, 1650-51 (Fed. Cir. 1988) (the claimed method was “disclosed
in both words and drawings”), we must agree with appellant that the plain language of appealed claim
12 requires that the fuse assembly constitutes a single fuse with multiple fusible elements.
Accordingly, in view of our interpretation of the appealed claims, we must reverse the ground of
rejection under § 112, first paragraph, written description requirement, because the examiner (answer,
pages 5 and 7) has not established a prima facie case that the claims do not comply with this statutory
provision by showing that the written description in the application does not “convey with reasonable
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