Appeal No. 2003-0642
Application No. 09/382,584
§ 103 are not well-founded. Accordingly, we will not sustain the
examiner's rejections.
We consider first the examiner's rejection under 35 U.S.C.
§ 112, first paragraph, enablement requirement. According to the
examiner, the disclosed process parameters "do not reasonably
provide enablement for one skilled in the art to perform the same
function and effect" (page 4 of Answer, first paragraph).
However, the examiner has not addressed appellants' citation of
Figures 2 and 3 of the instant specification which provide
several examples of operating parameters that allow for an
attainment of the claimed process. In our view, the examiner has
not satisfied his burden of establishing, by compelling reasoning
or objective evidence, that one of ordinary skill in the art
would be unable to practice the claimed invention without undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232,
212 USPQ 561, 563 (CCPA 1982); In re Marzocchi, 439 F.2d 220,
223, 169 USPQ 367, 369 (CCPA 1971).
Regarding the examiner's rejection of claims 75 and 76 under
the description requirement of § 112, first paragraph, it is the
examiner's position that the claim language "a time-modulated
plasma-inducing voltage" is new matter. However, appellants'
principal and reply briefs provide several instances where the
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