Appeal No. 2004-0140
Application No. 10/154,729
written descriptive support for the appealed claims that encompass bonding before
the forming step.
Appellants also assert that the limitation of claim 27, “bonding said first
metallic material to said second metallic material;” is disclosed in the provisional
application by the following:
Page 1, lines 21-42:
Shrink fit, diffusion bonding methods, and HIP can embodiment, are
all ways in which the first material is bonded to the other.
[Brief, p. 6], (underlining added).
We find that claim 27 is not limited to specific bonding techniques.
Specifically, claim 27 is not limited to bonding by the “Shrink Fit Method” and
“Diffusion Bond Technique” as disclosed in the provisional application. As
acknowledged by Appellants, “claim 27 is broad enough to ‘encompass’ the
sequential bonding and formation steps”. (Brief, p. 5, second paragraph). In view
of the above, the provisional application does not provide descriptive support for
claims 27 to 34 in the manner provided for in the first paragraph of § 112.
We conclude that the subject matter now claimed in this application is not
described in the provisional application Serial No. 60/110,765 in the manner
required by 35 U.S.C. § 112, first paragraph. Accordingly, the claims on appeal are
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