Appeal 2007-0712
Application 90/006,713
rejecting the claims.
The Examiner’s rejection of claims 29-36 based on the second
paragraph of 35 U.S.C. § 112 is verbatim the same as the written description
rejection. In the context of 35 U.S.C. § 112, second paragraph, the
Examiner has failed to explain why the scope of the invention sought to be
patented cannot be determined from the language of the claims, the
Specification or the teachings of the prior art with a reasonable degree of
certainty, as required. In re Wiggins, 488 F.2d 538, 541, 179 USPQ 421,
423 (CCPA 1973).
As already discussed above, at the heart of the Examiner’s rejections
is that the Specification does not provide enough information such that one
of ordinary skill in the art would be able to make or use the invention.
However, whether a Specification conveys enough information to enable
one of ordinary skill in the art to make or use an invention is a different and
separate requirement from the written description requirement or the
definiteness requirement. In that respect, and as already explained, the
Examiner has failed to make the requisite findings to support the assertions
made, e.g., that one of ordinary skill in the art would not know how to make
or use the invention without undue experimentation.
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