Appeal No. 1999-1417
Application 08/268,730
articles to “reaffirm” the adequacy of the disclosure of the present application (Appeal
Brief, page 23, first paragraph), we have carefully reviewed applicants’ specification in
conjunction with the cited articles. In our judgment, however, applicants have not
established on this record that the specification teaches those skilled in the art how to use
the full scope of the claimed invention without undue experimentation. As stated in In re
Fisher, 427 F.2d at 839, 166 USPQ at 24, the first paragraph of 35 U.S.C. § 112 requires
that the scope of the claims must bear a reasonable correlation to the scope of
enablement provided by the specification to persons of ordinary skill in the art. That is not
the case here. We conclude that claims 76 through 80 are not sufficiently enabled by the
specification as of the date that the patent application was first filed.
Other Issue
One further matter warrants attention.
The examiner finally rejected claim 74 under the judicially created doctrine of
obviousness-type double patenting over claims 15 and 16 of U.S. Patent No. 5,350,841
(Office Action mailed December 13, 1995, Paper No. 25). In the “Response to Final
Office Action” received June 27, 1996, applicants proffered a Terminal Disclaimer in an
effort to overcome this rejection.
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