Appeal No. 1998-1827 Page 9
Application No. 08/644,932
to practice the claimed invention without undue
experimentation when using first and second visually apparent
materials as herein claimed. See the portions of the
specification referred to above. To the extent the examiner
may have been concerned with claim breadth in that claim 18
does not set forth a particular positioning of the first and
second visually apparent materials as the examiner apparently
desires, we note that the mere possibility that a claim may
cover an inoperable species does not render it unduly broad.
See In re Kamal, 398 F.2d 867, 872, 158 USPQ 320, 324 (CCPA
1968).
We further note that appellants’ position on this issue
(brief, pages 3 and 4) is not effectively refuted by the
examiner’s commentary at pages 6 and 7 of the answer. In that
commentary, the examiner appears to focus on other disclosed
embodiments and, as a result, the examiner appears to confuse
such other embodiments with the herein claimed embodiment as
disclosed in original claim 18.
For the above reasons, we reverse the rejections under
35 U.S.C. § 112, first paragraph.
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