Appeal No. 2000-1569
Application 08/964,686
provide proof that the specification is enabling. As noted
above, appellants’ argument in the brief does not even address
the question of enablement as raised by the examiner. Thus,
appellants have failed to meet the burden placed on them to
respond to the examiner’s prima facie case of lack of enablement.
Accordingly, we sustain the examiner’s rejection of the appealed
claims based on lack of enablement.
We now consider the rejection of all appealed claims as
being indefinite under the second paragraph of 35 U.S.C. § 112.
With respect to representative claim 1, the examiner finds that
the phrase “less than 4A” is indefinite because it is not clear
what “4A” is referencing [answer, pages 3-4]. Appellants argue
that the skilled artisan would understand that the notation A is
used as an abbreviation for the unit of measure known as the
Angstrom [brief, pages 5-6]. The examiner responds that whether
a skilled artisan is able to look to the specification for an
understanding of the claimed invention is not germane. The
examiner insists that the letter “A” in the claims is indefinite
[answer, pages 8-9].
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