Appeal 2006-3401
Application 10/938,255
Cir. 2005). When a specification describes one inventive embodiment and a
claim defines the invention generically, the specification must enable a
person of ordinary skill in the art to make and use the generic invention
without undue experimentation. Id., 424 F.3d at 1345. Thus, an inventor
cannot always satisfy the requirements of § 112, in supporting expansive
claim language, merely by clearly describing one embodiment of the thing
claimed. Id., 414 F.3d at 1346.
According to the Appellants, "[t]he claims of the present application
are directed to an embodiment illustrated in Fig. 19 of the application and
described on page 10, lines 6-17, of the Specification" (Br.10). The
Appellants argue that page 10, lines 6-17, of the Specification describe two
different alternatives (Id. at 17). Lines 6-15 describe the first alternative and
refer to housing 26'' whereas lines 16-17 describe the second alternative and
do not refer to housing 26'' (Id.). The Appellants state that this second
alternative is the subject of the present claims (Id. at 18).
There is no merit in the Appellants' apparent belief that the afore-
noted second alternative does not include housing 26''. As correctly
explained by the Examiner, in describing this alternative, lines 16-17
explicitly refer to "the space 28'' ," and the antecedent basis for this
positively recited space 28'' appears in lines 7-8 which describe "a housing
26'' … defining an interior space 28'' ." Like the Examiner, therefore, we
find that the second alternative described on lines 16-17 of Specification
page 10 includes housing 26''.
In light of the foregoing, we additionally find that the one and only
embodiment disclosed by Appellants for practicing the here claimed method
includes use of a housing. The Specification contains no disclosure of
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