Appeal No. 2000-0920
Application No. 08/829,034
commensurate in scope with these claims. Specifically,
elemental calcium, iron, and nickel are clearly
encompassed by the present claims as those materials
with which the molten metal would be made. However,
calcium metal evolves hydrogen when it contacts
moisture or water and would cause harm to a living
organism if implanted thereinto in a significant
amount. Similarly, elemental iron would rust in the
body and could lead to necrosis. Elemental nickel is a
know [sic] carcinogen according to OSHA. For these
reasons, the claims are considered so broad as to
encompass inoperative embodiments.
The enablement requirement of the first paragraph of Section
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.” In re
Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). Although
the examiner has hypothesized that cermets containing significant
amounts of elemental calcium, iron, and nickel as the infiltrated
metal would cause harm to a living organism, we think it is
reasonably clear from appellant’s disclosure3 that claims 11-18
are directed to bone implants that do not encompass within their
scope the utilization of infiltrated metal or metal alloy that
would be incompatible with or harmful to the host organism.
Pointing out, as the examiner has done here, that a claim is
3See, for example, page 26, line 34, through page 27, line
1, of the specification.
4
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