Appeal No. 2000-1984
Application No. 08/565,775
With regard to the rejection under 35 U.S.C. § 112, first
paragraph, we held that there was inadequate support for the
carrier specified as being of a "non-ferrite material," as is now
claimed. Appellants allege that since the specification
indicates that the invention is advantageously used in hybrid or
multichip modulator technology and appellants have argued that in
such technologies a ferrite carrier is never used, it follows
that a non-ferrite carrier must be used because this is the
opposite of a ferrite carrier.
It appears to us that what appellants are stating as the
obvious is that these technologies have a planar carrier that is
made of an electrically insulating material. But since both
ferrite and non-ferrite materials may have insulative properties,
which is not disputed by appellants (see reply brief, page 2),
the carrier, as originally disclosed by appellants, need not
necessarily be made of non-ferrite material to be insulative.
Accordingly, the originally filed disclosure does not reasonably
convey to the artisan that the inventors had possession at that
time of the now-claimed "non-ferrite carrier."
Appellants now contend that claim 11, and the claims
dependent thereon (claims 12-16), should not have been rejected
under 35 U.S.C. § 112, first paragraph, because independent
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