Appeal No. 2002-1339
Application No. 09/148,239
Instead, the examiner questions enablement with regard to
achieving total mass values “approaching zero.” At page
9 of the answer, the examiner cites, in error, Section 2164.01(b)
of the Manual of Patent Examining Procedure (MPEP). The correct
cite of that Section states, “[a]s long as the specification
discloses at least one method for making and using the claimed
invention that bears a reasonable correlation to the entire scope
of the claim, then the enablement requirement of U.S.C. 112 is
satisfied.” We endorse this section of the MPEP.
Applying the cited MPEP section to the claims at hand, it is
clear that the instant specification is enabling for values,
albeit not all values, of mass recited in the claims. The
examiner does not deny that the specification is enabling for
some values in the claimed range. It does not matter at what
point the cited mass becomes non-enabling. The fact is, there is
enablement for the subject matter, as claimed, and one cannot
construe the claim language to encompass non-enabling embodiments
and then complain that the claim runs afoul of 35 U.S.C. § 112,
first paragraph, because the claim language appears to cover
nonenabling, as well as enabling, embodiments.
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