Appeal No. 2002-0741
Application No. 08/935,348
of these claims as being based on a nonenabling disclosure is
justified. See In re Mayhew, 527 F.2d 1229, 1233, 188 USPQ 356,
358 (CCPA 1976) (“[C]laims which fail to recite the use of a
cooling zone, specially located [said feature being taught as
critical in the disclosure], are not supported by an enabling
disclosure. Rejection[] . . . [under 35 U.S.C. § 112, paragraph
one], . . . will therefore be sustained”). Akin to the situation
in Mayhew, claims 1-12 are not supported by an enabling
disclosure because appellants’ disclosure does not teach how to
achieve the desired effect of the invention (i.e., a disposable
absorbent article securely adhered to a user’s skin, yet
releasable with minimum discomfort) in the absence of the
rheological property expressly stated to be “critical to the
article of the present invention” (page 24, line 16; emphasis
added).
In reaching our conclusion in this matter, we have given
careful consideration to the case of In re Goffe, 542 F.2d 564,
191 USPQ 429 (CCPA 1976) cited in Section 2164.08(c) of the
Manual of Patent Examining Procedure. In Goffe, the court stated
at 542 F.2d 567, 191 USPQ 432, that in determining whether an
unclaimed feature is critical, (1) the entire disclosure must be
considered, (2) broad language in the disclosure omitting the
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