Appeal No. 2004-0676
Application No. 09/562,686
this instance, in an effort to avoid piecemeal appellate review and
to avoid judicial and administrative inefficiency (see Ex parte
Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int. 1993) and Ex
parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984)), we will presume
that claim 31 is dependent claim 27, the only independent claim in
this application.
We turn next to the examiner’s rejection of claims 27 through
37 under 35 U.S.C. § 112, first paragraph, as failing to provide
written description for the subject matter presently claimed.
According to the examiner (Answer, page 4):
Claim 27 recites “...in a vacuum of no more than 10-3
mbar...” at line 9 of the claim. Originally-filed claim
2 and page 12 of the specification disclose a pressure of
from 10-3 to 10-5 mbar. This range does not include
pressures below 10-5 mbar. The originally-filed
disclosure does not reasonably convey that the inventors
had possession of pressures from <10-5 mbar to 0 mbar.
In response, the appellants argue (Brief, page 11) that:
The maximum limit of 10-3 Mbar is clearly disclosed and a
preferred range of 10-3 Mbar to 10-5 Mbar was specifically
disclosed. The minimum number is a matter of convenience
and to one skilled in the art is an arbitrary point. As
the only critical limit is the maximum point and the
other point is finite (the pressure cannot go below 0.0
Mbar), the concept of less than 10-3 Mbar is clearly
deisclosed [sic., disclosed] in the specification and the
term should be acceptable.
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