Appeal No. 2000-1569
Application 08/964,686
the rejection against independent claim 1 as representative of
all the claims on appeal.
We consider first the rejection of all appealed claims
(see footnote 1) based on the enablement requirement of 35 U.S.C.
§ 112. With respect to representative claim 1, the examiner
finds that the specification does not provide support for the
phrase “a surface roughness of less than 4A[ngstroms].” More
specifically, the examiner finds that the claim covers every
measurement of smoothness between 0 Angstroms and 4 Angstroms,
but the examiner notes that appellants’ specification does not
enable one skilled in the art to make and use a disk having a
surface roughness approaching zero Angstroms [answer, page 3].
Although appellants’ appeal brief recognized that the
question posed was whether the written description was enabling
[brief, page 4], appellants then proceeded to address the
question of whether a person skilled in the art would understand
the claimed invention [id., page 4]. Appellants then simply note
that the artisan would understand that the notation “A” stands
for Angstroms.
The examiner responds that appellants’ argument in the
brief is not germane to the rejection. It is clear from the
examiner’s response that the enablement rejection is primarily
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007