Appeal 2007-0409
Application 10/479,203
Rejection of claim 2 under 35 U.S.C. § 112, ¶ 1
According to the Examiner, the Specification, as originally filed, does
not provide support for the transparent layer having a thickness of "less than
25 nm" as recited in claim 2. (Answer 3-4). Appellants concede that there
is no explicit disclosure of the recited range, but argue that the disclosure of
the application as originally filed reasonably conveys to the artisan that
Appellants had possession of this range at the time of the invention. (Br. 5).
See In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983). In support of their contention, Appellants direct us to the
Specification, page 5, lines 4-8, which discloses a preferred thickness of 10-
50 nm and further states that a transparent layer which is too thick may have
a negative impact on the recording stack. Appellants assert that the absence
of any discussion regarding minimum thickness provides sufficient evidence
to support the full claim 2 thickness range of "less than 25 nm." (Br. 5).
Like the Examiner, we fail to see how the omission of language in the
Specification demonstrates that Appellants, at the time of the invention,
contemplated a transparent layer having a thickness in the range of 0 to 10
nm. See In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA
1976).
The rejection is affirmed.
Prior Art Rejections:
Appellants’ brief includes separate headings for each of claims 1-20.
However, Appellants do nothing more than point out what each claim
recites. Therefore, we do consider Appellants’ Brief as presenting
arguments for separate patentability of the claims. See 37 C.F.R.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: September 9, 2013