Appeal No. 2000-1569
Application 08/964,686
possible. Appellants provide an example of prior art techniques
in which an average surface roughness of about 19 Angstroms is
achieved. Appellants note that the proper selection of materials
as disclosed in their specification can achieve an average
surface roughness of about 1.58 Angstroms. Thus, appellants’
specification suggests that their invention has enabled them to
reduce average surface roughness of a disk from 19 Angstroms to
1.58 Angstroms. Since the art is clearly trying to achieve the
theoretical limit of an average surface roughness of zero
Angstroms, one must conclude that this theoretical limit has not
been achieved by appellants or by anyone else. The question is
whether appellants should be given a patent which covers an
average surface roughness of zero Angstroms when there is no
evidence that such an embodiment has been attained by appellants
or anyone else. It seems inappropriate to give appellants a
patent on embodiments which probably have not been attained yet.
In view of the above comments, we find that the examiner
has made a reasonable explanation of why the scope of protection
sought by the claims is not adequately set forth in appellants’
specification. The burden, therefore, shifts to appellants to
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