Appeal No. 2002-0033 Page 2
Application No. 09/372,020
BACKGROUND
The appellants' invention relates to skylights (specification, p. 1). A copy of the
claims under appeal is set forth in the appendix to the appellants' brief.
Claims 18 to 34 stand rejected under 35 U.S.C. 112, first paragraph, as based
on an inadequate written description and disclosure which is not enabling. The basis
for this rejection is set forth on page 4 of the final rejection as follows:
The prismatic portion being provided on the exterior surface is considered critical
or essential to the practice of the invention, but not included in the claim(s) is not
enabled by the disclosure. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356
(CCPA 1976).
The claims have been broadened by the omission of the limitation that the
prismatic portion is provided on the exterior surface. The specification fails to
satisfy the written description requirement and is not enabling for the prismatic
portion being provided anywhere other than the exterior surface. One skilled in
the art would not be taught by the written description of the invention in the
specification that the prismatic portion may be provided anywhere other than the
exterior surface. A claim which omits matter disclosed to be essential to the
invention as described in the specification is subject to rejection under 35 U.S.C.
112, first paragraph as not enabling. See Gentry Gallery, Inc. V. Berkline
Corp., 134 F. 3d 1473, 45 USPQ2d 1498 (Fed. Cir. 1998). See In re Mayhew,
527 F.2d 1229, 188 USPQ 356 (CCPA 1976); In re Venezia, 530 F.2d 956, 189
USPQ 149 (CCPA 1976); and In re Collier, 397 F.2d 1003, 158 USPQ 266
(CCPA 1968). See also Reiffin v. Microsoft Corp., 48 USPQ2d 1274, 1277
(N.D. Cal. 1998). and MPEP 2172.01.
The rejection of claims 18 to 34 under 35 U.S.C. § 251 based upon a defective
reissue declaration as set forth on page 2 of the final rejection is not under appeal as
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