Appeal No. 2006-2765
Application No. 10/372,160
OPINION
We have carefully considered the entire record before us, and we will
sustain the indefiniteness rejection of claims 1 through 11 and 28 through
30, reverse the lack of enablement rejection of claims 1 through 30, sustain
the nonstatutory rejection of claims 1 through 30, sustain the anticipation
rejection of claims 12 through 15, 17, 18 and 20 through 27, and sustain the
obviousness rejections of claims 1 through 11, 16, 19, 25 and 28 through 30.
Turning first to the indefiniteness rejection, the examiner states
(answer, page 9) that “[t]he claims are rendered indefinite because it is not
clear how ‘quantum mechanical tunneling’ is being used to solve the
problem of global optimization.” Although we agree with the appellants’
argument (reply brief, page 7) that “quantum mechanical tunneling” is well
known in the art, we must agree with the examiner’s conclusion (answer,
page 25) that “the intended scope of the claims would not be apparent to one
of ordinary skill in the art” because the disclosure does not provide ample
warning “as to what constitutes infringement” of the claimed invention.
Simply stated, the claims do not set forth the metes and bounds of the
“optimal solution” of the problem. When is the “optimal solution” reached?
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