Ex Parte Vu - Page 7



               Appeal No. 2007-0204                                                                         
               Application 10/938,966                                                                       
               "slice encoding and rewinding gradients" have been reduced.  Based on our                    
               reading of the specification, S3 and S4 are the only "slice encoding and                     
               rewinding gradients" and they are completely disabled, not diminished.                       
               Therefore, if "reduce" is defined to mean diminishing the gradients, but not                 
               completely eliminating them, there is no written description support.  Since                 
               claim 44 recites "disable slice encoding and rewinder gradients," it is clear                
               that Appellant could have recited "disable" instead of "reduced" if this is what             
               was intended.                                                                                
                     The third question is whether the claims are properly rejected under                   
               § 112, first paragraph, for lack of written description if the definition of                 
               "reduced" includes "turning off, or disabling."  We find that the claims are                 
               properly rejected because the specification does not show that Appellant                     
               possessed the full scope of the "reduced" limitation.  See LizardTech, Inc. v.               
               Earth Resource Mapping, Inc., 424 F.3d 1336, 76 USPQ2d 1724 (Fed. Cir.                       
               2005) (patent failed to demonstrate that patentee possessed the full scope of                
               the invention).  The specification only supports "turning off, or disabling" the             
               slice encoding and rewinder gradients, not just diminishing them.  Thus, even                
               if "reduced" includes "turning off, or disabling" the gradients, the rejection is            
               proper.  It is noted that similar reasoning can be applied to the limitation of              
               "increasing slice encoding and rewinder gradients" in claim 51, because                      
               "increase" means to make greater, which implies that the gradients must not                  
               be at zero.                                                                                  



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