Appeal 2007-0408
Application 10/150,014
The Specification does not use the terminology “metal oxide” or
“dielectric layer” nor does it disclose what characteristics make the
described layer compounds useful in the invention. Furthermore, there is no
description of the functions of the various layers.
The originally filed claims were limited to the layers (a) through (j) as
described in the Summary of the Invention. The present application is a
continuation of Application 09/795,976 which issued as U.S. Patent No.
6,445,503. Claim 1 of the patent is limited to a coating with layers (a)
through (j) as set forth in the Summary of the Invention.
C. Principles of Law
The enablement and written description requirements are separate and
distinct requirements of the statute and a “specification may contain a
disclosure that is sufficient to enable one skilled in the art to make and use
the invention and yet fail to comply with the description of the invention
requirement.” In re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA
1977).
The enablement requirement is often more indulgent than the written
description requirement. The specification need not explicitly teach those in
the art to make and use the invention; the requirement is satisfied if, given
what they already know, the specification teaches those in the art enough
that they can make and use the invention without “undue experimentation.”
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334,
65 USPQ2d 1385, 1400 (Fed. Cir. 2003). Whereas, “the purpose of the
‘written description’ requirement is broader than to merely explain how to
‘make and use’; the applicant must also convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he or she was in
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