Appeal 2006-2968
Application 10/039,481
rejections, we refer to the Brief, filed April 29, 20042, and the Rely Brief,
(i.e., response to Examiner's Answer, filed August 30, 2004) and to the
Answer, filed June 25, 2004.
OPINION
We will sustain each of these rejections for the reasons expressed in
the Answer and below.
The § 112 Rejection
The first paragraph of § 112 has been construed to mandate that the
Specification satisfy two closely related requirements. First, it must describe
the manner and process of making and using the invention so as to enable a
person of skill in the art to make and use the full scope of the invention
without undue experimentation. Second, it must describe the invention
sufficiently to convey to a person of skill in the art that the patentee had
possession of the claimed subject matter at the time of the application, that
is, that the patentee invented what is claimed. LizardTech, Inc. v. Earth
Resource Mapping, Inc., 424 F.3d 1336, 1345-46, 76 USPQ2d 1724, 1731
(Fed. Cir. 2006).
We agree with the Examiner that claims 32-46 fail to comply with the
written description requirement of § 112. As correctly explained by the
Examiner, these claims encompass methods which have not been described
2 We do not refer to the revised Brief, filed August 30, 2004, because it
corresponds to the April 20, 2004 Brief except for the "Grouping of the
Claims" section. As a matter of clarification in this latter regard, our
disposition of this appeal has included a full consideration of each argument
advanced for each claim grouping as presented in both of these Briefs.
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