Appeal 2006-1705
Application 10/744,481
dioxide generated to the sum of the concentrations of chlorine dioxide
generated and chlorite anion being at least 0.25:1 by weight."
We refer to the Brief and Reply Brief and to the Answer for a
thorough exposition of the opposing viewpoints expressed by the Appellants
and by the Examiner concerning the above noted rejection.
OPINION
This rejection cannot be sustained.
We apply the following well-established legal principles in assessing
the Examiner's position that the scope of enablement provided by the
Appellant's specification is not commensurate with the scope of the appealed
claims.
First, it is the function of the specification, not the claims, to set forth
the practical limits of operation of an invention. In re Johnson, 558 F.2d
1008, 1017, 194 USPQ 187, 195 (CCPA 1977). One does not look to claims
to find out how to practice the invention they define, but to the specification.
Id.
Second, the specification as a whole must be considered in
determining whether the scope of enablement provided by the specification
is commensurate with the scope of the claims. Id.
Finally, when rejecting a claim for lack of enablement, the Patent and
Trademark Office (PTO) bears an initial burden of setting forth a reasonable
explanation as to why it believes that the scope of protection provided by the
claim is not adequately enabled by the description of the invention provided
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