Appeal 2007-0408
Application 10/150,014
(Fed. Cir. 1997)). “It is a truism that a claim need not be limited to a
preferred embodiment. However, in a given case, the scope of the right to
exclude may be limited by a narrow disclosure.” Id. Each case turns on its
own facts. In re Smythe, 480 F.2d at 1382, 178 USPQ at 284.
In the current case, not only does the Specification limit the discussion
to the species (a) through (j), there is no discussion of using other “dielectric
layers” or “metal oxides” for any of the layers. Nor is there any discussion
of particular properties or functions with respect to any of the layers which
would serve to convey to the skilled artisan that Appellant was in possession
of something more than the specific layer system (a) through (j) recited in
the Summary of the Invention. Moreover, there is no discussion of just what
layers are critical or essential to obtain the disclosed desired properties of
high durability, low-E, and heat treatability. Appellant has not conveyed to
one of ordinary skill in the art that the composition of any particular layer is
less critical than the others or that he was in possession of something more
than what is described in the Summary of the Invention.
A preponderance of the evidence supports a finding of lack of written
description sufficient to shift the burden to Appellants to show that, in fact,
the original written description would convey to one of ordinary skill in the
art that Appellants were in possession of the claimed invention as now
broadly claimed.
We, therefore, enter a new ground of rejection pursuant to our
authority under 27 C.F.R. § 41.50(b) on the basis of lack of written
descriptive support under 35 U.S.C. § 112, ¶ 1 against all the pending
claims, i.e., claims 11, 13, 14, 16, 18-20, 22-25, 27, 29-31.
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