Appeal No. 2005-1296
Application No. 09/961,545 4
We will not sustain the examiner’s rejection of the appealed
claims under 35 U.S.C. § 101 as lacking utility. First, we do not
understand what the phrase “in such a way” possibly being vague and
indefinite has to do with utility under 35 U.S.C. § 101. The
examiner’s reasons for the rejection seem to be addressed to
whether the claims are vague and indefinite rather than to whether
the invention has utility. The utility disclosed for the claimed
invention is that a propulsive force can be created by an energy
density altering means. This by itself is normally sufficient to
establish utility under 35 U.S.C. § 101. Second, if the examiner’s
rejection is based upon the examiner’s view that the underlying
theory is flawed, then the examiner has failed to provide any
evidence in support of that position. The evidence submitted by
appellant during prosecution of this application at least shows
that there is some scientific support behind the underlying theory
of the claimed invention. Therefore, when the record before us is
viewed as a whole, there is no support for the examiner’s position
that the invention lacks utility.
We now consider the rejection of claims 1-16, 18 and 19
under 35 U.S.C. § 112, first paragraph, as being based on a non-
enabling disclosure. The examiner observes that the specification
fails to describe, inter alia, critical dimensions, voltage and
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