Appeals 2006-2874 and 2006-2747
Applications 08/544,212 and 09/287,664
Patent 5,401,305
1 is not enabling while at the same time their specification is enabling.5 It
2 follows that if a rejection under § 103(a) is not viable, the claims are
3 unpatentable under the enablement requirement of the first paragraph of
4 § 112.
5
6 F. Other issues
7 Appellants request that the rejections be reversed and that the reissue
8 application be remanded to the Examiner "for issuance of a Notice of
9 Allowance." Our function as a Board is to review rejections. In those cases
10 where we reverse a rejection, the application is necessarily remanded to the
11 Examiner for action consistent with our reversal. 37 C.F.R. § 41.54 (2006).
12 Cf. In re Fisher, 448 F.2d 1406, 171 USPQ 292 (CCPA 1971) (every
13 reversal is a patent case is in effect a remand). We do not order the
14 Examiner to issue notices of allowance.
15 Appellants also request, in the event of an affirmance, that they be
16 allowed to dedicate the invention to the public on two conditions: (1) an
17 interference be declared between Appellants and three patents owned by
18 another entity and (2) Appellants prevail in the interference(s). As an ex
19 parte appeals panel we have no occasion to address Appellants’ request as it
20 is not relevant to the appeal under § 134. Whether there is interfering
21 subject matter is a matter the Examiner can consider when ex parte
5 In the event of further prosecution, we would suggest that claims 28-29
and 31-32 do not comply with the written description requirement of the first
paragraph of 35 U.S.C. § 112. Use of a precursor of silicon oxide would
appear to be a material element of Appellants' invention. No composition
for making a film appears to be described which would not include silicon
oxide.
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