Appeal No. 2005-1296
Application No. 09/961,545 5
power magnitudes, and component compositions which would be
necessary for the artisan to make and use the claimed invention
[final rejection, page 3, incorporated into answer at page 3].
Appellant argues that the examiner is holding the instant
specification to an unreasonably high standard because the examiner
infers that the claimed invention promises a technical leap
forward. Appellant argues that the level of detail required by the
examiner is not required by the first paragraph of 35 U.S.C. § 112
[brief, page 10].
The examiner responds that one skilled in the art could not
replicate appellant’s invention as critical masses, schematics,
voltages, dimensions, and other quantities and characterizations
are absent from the disclosure. The examiner again questions the
soundness of the scientific theory upon which appellant’s invention
is based [answer, pages 5-6].
We will sustain the examiner’s rejection of claims 1-16, 18
and 19 as being based on a non-enabling disclosure. Appellant’s
invention is based upon a theory that was, at the time this
application was filed, questionable at best. Appellant relies on
two papers published by Dr. James Woodward as evidence that the
theory is sound. These papers by Dr. Woodward, however, indicate
that the results achieved therein were of laboratory interest only
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