Appeal 2007-0408
Application 10/150,014
example of how to make and use an example embodiment of the invention
(Br. 12-14).1 Appellant contends that, contrary to the findings of the
Examiner, there is nothing in the Specification which states that any material
is “critical.” (Reply Br. 1-3). Appellant further contends that the Examiner
has confused enablement with written description (Br. 14). Appellant then
contends there is written descriptive support for the claimed subject matter
because the layer system (a) through (j) is merely a preferred embodiment
and the claims do not have to be limited to the preferred embodiment (Br.
14-16). While the Examiner has not directly rejected the claims for lack of
written descriptive support, the Examiner states that Appellant appears to be
correct in recognizing that the claims also lack written descriptive support
(Answer 11).
There are two issues arising out of the dispute: Has the Examiner
advanced acceptable reasoning to establish a prima facie case of lack of
enablement? And: Do the claims satisfy the written description requirement
of the statute?
B. Facts
The claims are directed to highly durable, low-E (low-emissivity),
heat treatable layer coating systems on glass (Specification 1:3-8). The
Specification indicates that layer coating systems are well known in the
architectural and automotive field (Specification 1:10-12). These coating
systems are designed to reflect infrared energy while allowing visible light
to pass through the glass (Specification 1:12-16). The system must also be
heat treatable so that it will not deteriorate when heated for bending,
tempering, or heat strengthening (Specification 2: 3-8). Moreover, the
1 References to the Brief are to the Supplemental Brief filed April 14, 2006.
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