Appeal No. 2001-2200
Application No. 09/286,328
Each of claims 44 and 45 requires that the electrode is formed by a process
including "laminating aluminum-copper alloy films and copper." The '917 patent does
not teach what structure may result from the claimed steps. However, because the
rejection fails to explain why the claimed steps might reasonably be expected to yield a
product no different from admitted prior art Figure 1, we cannot sustain the rejection of
the claims. Thus, the section 102 rejection applied against claims 34-36 and 43-45 is
not sustained.
New ground of rejection -- 37 CFR § 1.196(b)
We enter the following new ground of rejection against the claims in accordance
with 37 CFR § 1.196(b): Claims 8, 10-13, 20, 22-25, 27-33, 40-42, 44, and 45 are
rejected under 35 U.S.C. § 112, first paragraph, as appellants' disclosure fails to
provide written description for the invention now claimed.
The “description of the invention” requirement in 35 U.S.C. § 112, first paragraph
is separate and distinct from the enablement requirement. In re Barker, 559 F.2d 588,
591, 194 USPQ 470, 472 (CCPA 1977). To comply with the written description
requirement, an applicant must convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the invention. The
invention is, for purposes of the "written description" inquiry, whatever is now claimed.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991).
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