Appeal No. 2005-0181
Application No. 09/781,631
conducted to determine the “toughness”, and as such there does
not appear adequate enablement in the specification for the
skilled artisan to arrive at this limitation. Answer, pages 4-6
Because of our determinations made with regard to claims 41,
43, and 48, with respect to the 35 U.S.C. § 112, second paragraph
(indefiniteness) rejection of claims 41, 43, and 48, wherein we
affirmed the rejection of these claims, we reverse this rejection
pro forma. Because we are unable to determine the metes and
bounds of these claims, we cannot address the issue as to whether
these claims are enabling under 35 U.S.C. § 112, first paragraph.
See In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971).
With regard to claim 42, the examiner states that the
specification teaches that the core-shell substance is required
in the claimed composition to achieve the improved mechanical
properties described therein. The examiner refers to page 8 of
the specification, which includes the statement that “the
invention features an underfill composition having improved
mechanical properties resulting from the inclusion of a novel
‘core-shell’ substance.” The examiner states that the skilled
artisan would not have been able, by the specification, to make a
composition that does not contain such an additive.
It appears that the examiner’s position is that because
these claims do not recite the “core-shell substance”, these
claims are not enabled. Appellant addresses this rejection by
stating support can be found for claims 42-51 on page 11 of the
specification. Brief, page 6. We find that page 11 of the
specification does not disclose any subject matter in support of
appellant’s position. We further agree with the examiner’s
finding, that page 8 of appellant’s specification discloses that
it is the inclusion of the core-shell substance, as recited,
-8-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007