Appeal No. 2002-0181
Application No. 08/476,497
described in Toibana. Because the examiner’s rejection is based
strictly on conjecture, we cannot affirm.
Remand Order
The examiner is required to consider the following
rejections.
The examiner should consider rejecting claim 19 under 35
U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement of the statute. Specifically,
the term “silicon fibers” does not appear anywhere in the
specification as originally filed. Although the specification
as originally filed describes silicon carbide and silicon
nitride fibers, there is no description that would support the
genus of “silicon fibers.” See In re Lukach, 442 F.2d 967, 968,
169 USPQ 795, 796 (CCPA 1971) (“[W]here an applicant claims, as
here, a class of compositions, he must describe that class in
order to meet the description requirement of the statute.”).
The examiner and the appellant should consider the
patentability of the claims of the present application over the
same prior art references applied in affirmed rejections in the
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