Appeal No. 2001-2143
Application No. 09/093,248
OPINION
At the outset, we note that instant claims 18-23, as presented in the appendix to
the principal brief, are identical to claims 24-29, respectively. We will leave the
cancellation of the identical claims to the good auspices of appellant and the examiner
since any patent, should one ultimately issue, may not contain identical claims.
Turning, first, to the rejection under 35 U.S.C. § 112, first paragraph, a
specification disclosure which contains a teaching of the manner and process of making
and using the invention in terms which correspond in scope to those used in describing
and defining the subject matter sought to be patented must be taken as in compliance
with the enabling requirement of the first paragraph of 35 U.S.C. § 112 unless there is
reason to doubt the objective truth of the statements contained therein which must be
relied on for enabling support. Assuming that sufficient reason for such doubt does
exist, a rejection for failure to teach how to make and/or use will be proper on that
basis; such a rejection can be overcome by suitable proofs indicating that the teaching
contained in the specification is truly enabling, In re Marzocchi, 439 F.2d 220, 223, 169
USPQ 367, 369 (CCPA 1971); In re Sichert, 566 F.2d 1154, 1160, 196 USPQ 209, 214
(CCPA 1977).
The examiner questions how the structure of the conductor strips 28 can be
fabricated. Page 8 of the specification indicates that the strips may be fabricated of
copper and that each strip is, preferably, on the order of one to ten microns in thickness
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