Appeal No. 1998-2265
Application No. 08/498,482
Claims 2, 6, and 8 through 11 stand rejected under the
first paragraph of 35 U.S.C. § 112 as failing to satisfy the
enablement requirement of the statute. (Examiner’s answer,
pages 3-5.)
We reverse the aforementioned rejection for reasons which
follow.
The examiner’s basic position is stated as follows:
Claims 2, 6, and 8-11 are rejected under 35
U.S.C. 112, first paragraph, because the
specification, while being enabling for claims drawn
to a method of manufacturing the alloy in the
specification and claims comprising solution
treating at a temperature of 1060BC for about 15
minutes, precipitation...one to two hours, cold
rolling...60% and recrystallization...10µm, in order
to impart superplasticity to the alloy, does not
reasonably provide enablement for the scope claimed,
which does not specify the solution treating
parameters or the recrystallization parameters. The
specification does not enable any person skilled in
the art to which it pertains, or with which it is
most nearly connected, to make and/or use the
invention commensurate in scope with these claims.
[Examiner’s answer, pp. 3-4.]
The examiner further alleges:
[T]he ability to determine processing parameters for
preparing materials which will contain the fine
grained microstructures claimed after the thermal
history as claimed of casting, solution treating,
cold working, precipitation hardening, and
4
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