Appeal No. 2005-1296
Application No. 09/961,545 3
requirements of 35 U.S.C. § 101. We are also of the view that the
specification of this application fails to provide an enabling
disclosure as required by 35 U.S.C. § 112. Accordingly, we affirm.
We consider first the rejection of claims 1-16, 18 and 19
under 35 U.S.C. § 101 as lacking utility. In support of this
rejection, the examiner simply asserts that the phrase “in such a
way” is vague and lacks specificity as to exactly how the material
is altered to create a propulsive force. The examiner also seems
to question the theory underlying appellant’s invention [final
rejection, pages 2-3, incorporated into answer at page 3].
Appellant argues that the phrase “in such a way” describes the
timing of the application of an energy density altering means so
that a propulsive force is developed. Appellant asserts that the
phrase should be considered part of an “act in support thereof”
under the sixth paragraph of 35 U.S.C. § 112. Appellant also
argues that the invention is operable based on the experimental
work of Dr. James Woodward [brief, pages 7-9].
The examiner responds that the phrase “in such a way” is vague
and indefinite. The examiner also responds that the sixth
paragraph of 35 U.S.C. § 112 does not apply because the phrase “in
such a way” modifies the altering means by a further act [answer,
pages 4-5].
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007