Appeal 2006-1705
Application 10/744,481
In light of the foregoing, we cannot agree with the Examiner that the
subject specification limits the Appellants' invention to a massive body
which, in operation, produces a solution containing at least 25% by weight
chlorine dioxide. The Examiner's enablement position would not be well-
taken even if a solution of at least 25% by weight chlorine dioxide were
considered to be the practical limit of operation for the Appellants' disclosed
and claimed massive body. This is because it is improper to require the
claims to set forth the practical limits of operation for an invention.
Johnson, 558 F.2d at 1017, 194 USPQ at 195. As explained in Johnson, id.
(citing In re Goffe, 542 F.2d 564, 567, 191 USPQ 429, 431 (CCPA 1976)):
[T]o provide effective incentives, claims must
adequately protect inventors. To demand that
the first to disclose shall limit his claims to what
he has found will work or to materials which
meet the guidelines specified for "preferred"
materials in a process such as the one herein
involved would not serve the constitutional
purpose of promoting progress in the useful arts.
[citation and footnote omitted.]
For the above stated reasons, it is our determination that the Examiner has
failed to carry his initial burden of setting forth a reasonable explanation as
to why he believes that the scope of protection provided by the appealed
claims is not adequately enabled by the description of the invention provided
in the specification of this application. Wright, 999 F.2d at 1561, 27 USPQ
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007