Appeal 2007-0408
Application 10/150,014
With respect to the enablement rejections made by the Examiner,
more is required in terms of evidence to support the rejection. As we find
above, the Examiner has established that the scope of the claims is broader
than the description of the invention in the original Specification. The
Examiner contends that “[w]ithout guidance from the prior art or appellant’s
own disclosure, due to the vast number possible material combinations, there
is insufficient information provided to one of ordinary skill in the art to
practice the invention commensurate with the entire scope of the instant
claims.” (emphasis added) (Answer 8). But this statement overlooks the fact
the Examiner must take into account guidance within the prior art when
considering enablement. The inventor need not include in the specification
that which is already known and available to one of ordinary skill in the art.
See In re Howarth, 654 F.2d 103, 105, 210 USPQ 689, 691-92 (CCPA 1981)
(“An inventor need not, however, explain every detail since he is speaking to
those skilled in the art.”). There is a lack of evidence with regard to the
foundation of knowledge of one of ordinary skill in the art of glass coating
on this record. The Examiner has not provided evidence that one skilled in
the art could not select the appropriate metal oxide and dielectric compounds
for use in the coating of the claims.
The Examiner further finds that the Specification teaches that the ten
layers (a) through (j) are critical for obtaining the durability, heat treatability,
and low emissivity desired (Answer 8-9). The Examiner, however, does not
provide any reasoning or evidence in support of this statement. As pointed
out by Appellant, the Specification does not state that any particular layer or
combination of layers is critical. In the face of silence it was incumbent on
the Examiner to provide reasoning or evidence in support of criticality. We
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