Appeal 2007-2929
Application 10/615,389
Appellants’ Specification. See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989); In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983).
The Examiner argues that the Appellants’ disclosure is not enabling
for the recited gain non-uniformities of “less than 25%” (claims 1, 5 and 7)
and “less than 19%” (claims 4, 6 and 9) because those ranges encompass a
gain non-uniformity of zero (Ans. 4-5). That argument is not convincing
because the Examiner has not established that either 1) one of ordinary skill
in the art could not, through no more than routine experimentation, have
obtained with the Appellants’ claimed optical amplification module a zero
gain non-uniformity, see In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d
1510, 1513 (Fed. Cir. 1993), or 2) if a gain non-uniformity of zero is
unachievable, one of ordinary skill in the art would have considered the
broadest reasonable interpretation of the Appellants’ claims in view of the
Appellants’ Specification to encompass an unachievable gain non-
uniformity.1
The Examiner argues, regarding claims 8 and 10, that the frequency
about which “wavelength bandwidth exceeds 50 nm” is centered can be zero
or infinity, both of which are mathematically undefined (Ans. 4). That
argument is not persuasive because the Examiner has not established that the
Appellants’ term “signal light”, given its broadest reasonable interpretation
1 The Examiner’s question “What is the scope of the claims?” (Ans. 9)
pertains to claim clarity under 35 U.S.C. § 112, second paragraph, not
enablement under 35 U.S.C. § 112, first paragraph.
4
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