Appeal No. 2000-1241
Application No. 08/424,156
and failed to distinctly claim what appellant in his brief insisted was his invention). See
also Reiffin v. Microsoft Corp., 48 USPQ2d 1274, 1277 (N.D. Cal. 1998) (omitted
elements test), rev'd, remanded on other grounds 214 F.3d 1342, 54 USPQ2d 1915
(Fed. Cir. 2000); and Manual of Patent Examining Procedure §§ 2172, 2172.01.
Here, the examiner has not maintained that the specification has identified all of
the magnetic tape characteristics as essential or required to produce the desired result.
The examiner has merely maintained that all of the relevant characteristics are required
to provide the claimed desired result of a recording capacity having a "relatively high
areal recording density." (See answer at page 7.) Here, the claimed invention sets
forth a desired result of a recording capacity having a "relatively high areal recording
density." We find that this is a broad recitation of a desired goal and merely requires
one of the many characteristics that a material may possess. We disagree with the
examiner and agree with appellants that the language of the claim is broad in scope
rather than lacking in enablement. Clearly, the specification at pages 36-37 describes
the characteristics of the magnetic tape produced by the process described
on the immediate preceding pages. The examiner has not maintained that this process
to be non-enabling, nor has the examiner questioned the disclosure of the actual use of
the tape in a recording device. Therefore, we cannot sustain the examiner's rejection of
claims 1, 2, 4, 6-8, 10-14, and 17-19 based upon 35 U.S.C. § 112, first paragraph.
35 U.S.C. §112, SECOND PARAGRAPH
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