Ex Parte Arinaga et al

Patent Trial and Appeal Board

Aug 29, 2016

10940746 (P.T.A.B. Aug. 29, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/940,746 09/15/2004 Kenji Arinaga 040442 7752
23850 7590 08/29/2016
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
EXAMINER
SISSON, BRADLEY L
ART UNIT PAPER NUMBER
1634
MAIL DATE DELIVERY MODE
08/29/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KENJI ARINAGA, ULRICH RANT, SHOZO FUJITA,
TSUYOSHI FUJIHARA, MARC TORNOW, and
GERHARD ABSTREITER
____________

Appeal 2014-009316
Application 10/940,7461
Technology Center 1600
____________

Before DONALD E. ADAMS, ULRIKE W. JENKS, and
KRISTI L. R. SAWERT Administrative Patent Judges.

SAWERT, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
40–45. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify DYNAMIC BIOSENSORS GMBH as the real
party in interest. Appeal Br. 3.

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STATEMENT OF THE CASE
Claims 40–45 stand rejected and are on appeal. The Examiner finally
rejected2 those claims as follows:
A. Claims 40–45 under 35 U.S.C. § 112, second paragraph, for
indefiniteness;

B. Claims 40–45 under 35 U.S.C. § 112, first paragraph, for lack
of written description;

C. Claims 40–45 under 35 U.S.C. § 112, first paragraph, for lack
of enablement;

D. Claims 40–45 under 35 U.S.C. § 102(e) for anticipation by
Nakajima; and

E. Claims 40–45 under 35 U.S.C. § 102(f) because the
applicants did not invent the claimed subject matter.
We choose independent claim 40 as representative of claims 40–45.
See 37 C.F.R. § 41.37(c)(1)(iv). Claim 40 provides:
40. An analytical device, comprising:
a carrier body having an electrode surface;
a counter electrode;
at least one nanowire attached to said electrode surface, wherein the
nanowire comprises
a molecule of DNA, RNA, peptide nucleic acid, locked nucleic acid,
charged polypeptide chain, or charged polymer, wherein the aspect ratio of
the length to diameter of the nanowire is not less than 2:1;

2 The Examiner withdrew the rejection of claims 40–45 under 35
U.S.C. § 112, first paragraph, for lack of written description (new matter) in
the Examiner’s Answer. See Ans. 30.
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a fluorescently labeled part bound to said nanowire;
a voltage source for applying a voltage between the electrode surface
of the carrier body and the counter electrode;
a light source for irradiating the nanowire; and
a light detector for detecting fluorescence from the fluorescently
labeled part.
Appeal Br. 28 (claim 40).
DISCUSSION
A. Indefiniteness
The Examiner rejected claims 40–45 under 35 U.S.C. § 112, first
paragraph, for failing to particularly point out and distinctly claim the
subject matter applicant regards as the invention. “[A] claim is indefinite
when the boundaries of the protected subject matter are not clearly
delineated and the scope is unclear.” Supplementary Examination
Guidelines for Determining Compliance With 35 U.S.C. § 112 and for
Treatment of Related Issues in Patent Applications, 76 Fed. Reg. 7164 (Feb.
9, 2011) (“Indefiniteness Guidelines”); see also MPEP § 2173.02; In re
Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (“[W]e affirm the Board’s
findings as to indefiniteness under the MPEP standard properly applied by
the USPTO . . . .”). The Examiner sets forth several bases for rejecting the
claims for indefiniteness. Because we agree with some, but not all of those
bases, we reverse the rejection as to claims 40–42, 44, and 45, but affirm the
rejection as to claim 43. We address each basis for rejection in turn below.

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“essential structural cooperative relationships”
The Examiner states that the claims 40–45 are indefinite for “omitting
essential structural cooperative relationships of elements,” between (a) the
carrier body and the counter electrode, (b) the carrier body and the voltage
source, (c) the carrier body and the light detector, (d) the carrier body and
the means for measuring the amplitude of the detected fluorescence; and (e)
the counter electrode, the voltage source, the light source, and the light
detector. Final Off. Act. 2–3 (citing MPEP § 2172.01). Section 2172.01 of
the MPEP states that “a claim which fails to interrelate essential elements of
the invention as defined by applicant(s) in the specification may be rejected
under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph, for
failure to point out and distinctly claim the invention.”
We find that, in this case, the Examiner has failed to explain what
“essential elements” “defined by applicant(s) in the specification” have been
omitted by the claims. Put differently, the Examiner has not showed by a
preponderance of the evidence that an element that Appellants disclosed as
“essential” to the invention has been omitted from the claim. In the Answer,
the Examiner elaborates that the claims are “analogous to listing of
numerous parts in a catalog and describing what they could be used for, yet
not describ[ing] how the particular claimed ‘analytical device’ is actually
constructed.” Ans. 30–31. But we note that “[t]he purpose of claims is not
to explain the technology or how it works, but to state the legal boundaries
of the patent grant.” S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1369 (Fed.
Cir. 2001). Because there is insufficient evidence that the legal boundaries
of the claims are unclear for omitting “essential elements,” we must reverse
based on this rationale.
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“a fluorescently labeled part” and “a carrier body”
The Examiner states that the claims 40–45 are indefinite “with respect
to what constitutes the metes and bounds of ‘a fluorescently labeled part’
and “a carrier body.’” Final Office. Act. 3. The Examiner provides no
evidence or reasoning for the rejection, but merely states that the terms are
indefinite. “The Office action must set forth the specific term or phrase that
is indefinite and why the metes and bounds are unclear.” Indefiniteness
Guidelines, 76 Fed. Reg. 7169. Because the Examiner does not explain why
an ordinarily-skilled artisan would not understand the metes and bounds of
these claim terms, we must reverse based on this rationale.
“nanowire”
The Examiner states that the claims 40–45 are infinite “with respect to
what constitutes the metes and bounds of a ‘nanowire.’” Final Off. Act. 3.
In particular, the Examiner contends that a nanowire can “seemingly . . .
comprise any material which exhibits a wiry formation.” Id. (quotations
omitted). Appellants point out that claim 40, itself, provides a definition of
“nanowire”—“a molecule of DNA, RNA, peptide nucleic acid, locked
nucleic acid, charged polypeptide chain, or charged polymer, wherein the
aspect ratio of the length to diameter of the nanowire is not less than 2:1.”
Appeal Br. 16. We agree with Appellants that this definition is sufficiently
clear. The Examiner’s response that the word “‘comprise’ (not consisting
of) leaves the claim open so to encompass other members that are not recited
in the grouping,” Ans. 36, is not persuasive. As the Federal Circuit has
explained, “[t]he broadest-construction rubric coupled with the term
‘comprising’ does not give the PTO an unfettered license to interpret claims
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to embrace anything remotely related to the claimed invention.” In re Suitco
Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we must reverse
based on this rationale.
“material attached to said nanowire”
The Examiner states that claim 44 is indefinite because “it is unclear if
the ‘material attached to said nanowire’ can also be the very material of
which the nanowire is comprised.” Final Off. Act. 3. Claim 44 defines
“material” as “proteins and organic molecules having affinity to proteins.”
Appeal Br. 29. The Examiner provides no explanation or evidence as to
why an ordinarily-skilled artisan would not understand the “proteins and
organic molecules having affinity to proteins.” Again, we must reverse
based on this rationale.

“the distance of the fluorescently-labeled part from the electrode
surface is dependent upon the potential between electrode and counter-
electrode”
The Examiner states that claim 42 is indefinite because it “is
confusing as to how ‘the distance of the fluorescently-labeled part from the
electrode surface is dependent upon the potential between electrode and
counter-electrode.” Final Off. Act. 3. Again, we must reverse based on this
rationale because the Examiner merely calls the limitation “confusing”
without any explanation as to why an ordinarily-skilled artisan would not
understand this phrase.

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“small,” “increase,” and “enlarge”
Claim 43 is dependent from claim 42, and further recites “the
fluorescence from said fluorescently-labeled part can be quenched by the
carrier body when the distance between the fluorescently-labeled part and
the carrier body is small, and the fluorescence increases when the distance
between the fluorescently-labeled part and the carrier body is enlarged.”
Appeal Br. 29. The Examiner states that claim 43 is indefinite because the
terms “small,” “increase,” and “enlarged” are relative terms. Final Off. Act.
4. As to “small,” the Examiner points out that the Specification does not
provide a standard for determining what is “small.” Id. Appellants, in
response, contend that “this recitation is a functional characterization of the
structure of the apparatus,” Appeal Br. 17, and, because “small” is recited in
comparison to “enlarged,” a “relative recitation is appropriate.” Reply Br. 8.
On this basis for rejection, we agree with the Examiner.
Although we acknowledge that neither relative terms nor functional
language is per se indefinite, we find here that the recitation of “small,”
“increase,” and “enlarged” fails to provide for a reasonably precise claim
scope. “The claims, when read in light of the specification . . . , must
provide objective boundaries for those of skill in the art.” Interval Licensing
LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). Here, Appellants
fail to point to any passage in the Specification setting forth the boundaries
of “small,” “increase,” and “enlarged,” and we find nothing in the
Specification adequately explaining the same. Indeed, when describing the
distance between the “fluorescently-labeled part” and the “carrier part,” the
Specification merely states that the distance can be “enlarged.” See, e.g.,
Spec. 21:5–15. The Specification fails to mention a “small” distance, let
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alone what an ordinarily-skilled artisan should consider a “small” distance.
For these reasons, we affirm the Examiner’s rejection based on this
rationale.

B. Written Description
The Examiner rejected claims 40–45 under 35 U.S.C. § 112, ¶ 1, for
lack of written description. Final Off. Act. 4–9. The first paragraph of
§ 112 requires that the specification contain a written description of the
claimed invention. 35 U.S.C. § 112, ¶ 1 (2011). “[T]he hallmark of written
description is disclosure.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). The written description requirement
is met when the specification “conveys to those skilled in the art that the
inventor had possession of” and “actually invented” the claimed subject
matter. Id.
For claims encompassing a genus, sufficient written description
“requires the disclosure of either a representative number of species falling
within the scope of the genus or structural features common to the members
of the genus so that one of skill in the art can ‘visualize or recognize’ the
members of the genus.” Id. at 1350 (quoting Regents of the Univ. of
California v. Eli Lilly & Co., 119 F.3d 1559, 1568–69 (Fed. Cir. 1997)).
Functional claim language may meet the written description requirement
when there is a “known or disclosed correlation between function and
structure.” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed.
Cir. 2002) (quotation omitted). But in the absence of a structure-function
correlation, the written description requirement demands “a precise
definition, such as by structure, formula, chemical name, physical properties,
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or other properties, of species falling within the genus sufficient to
distinguish the genus from other materials.” Ariad, 598 F.3d at 1350.
We find that a preponderance of the evidence supports the Examiner’s
finding of lack of written description. The claimed invention encompasses a
genus of nanowires (i.e., “DNA, RNA, peptide nucleic acid, locked nucleic
acid, charged polypeptide chain, or charged polymer”) that are employed as
an integral part of the claimed “analytical device.” Final Off. Act. 7. But, as
the Examiner found and we agree, the Specification provides “no Sequence
Listing, much less a Sequence Listing that teaches even one such molecule.”
Id. at 8. We find that, other than providing general size requirements, see
e.g., Spec. 52:6–16, the Specification does not provide any “precise
definition” of the nanowire, “such as by structure, formula, chemical name,
physical properties, or other properties” that would allow the skilled artisan
to distinguish the genus of nanowires falling within the scope of the claim
from other DNAs, RNAs, peptide nucleic acids, locked nucleic acids,
charged polypeptide chains, or charged polymers outside the scope of the
claim. Ariad, 598 F.3d at 1350.
Instead, the Specification broadly states that “[a]ny material can be
arbitrarily chosen as a wiry formation (referred to as ‘nanowire’ . . . ).”
Spec. 52:6–7. But “an adequate written description of a claimed genus
requires more than a generic statement of an invention’s boundaries.” Id. at
1349. Here, Appellants have generically stated that they claim a device
utilizing a genus of nanowires, but have failed to show in the Specification
that they actually possessed any of those nanowires. As the Examiner
explained and we agree: “the specification still must provide a full, clear,
and concise description of the genus encompassed by the claims so that one
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would be readily able to determine if a species fell within the claim’s
scope.” Final Off. Act. 7.
We are not persuaded otherwise by Appellants’ argument that the
written description requirement does not apply because the “nanowires” are
just one element of a claim drawn to an apparatus, instead of a method.
Appeal Br. 18–19; Reply Br. 8–9. The written description requirement has
long been applied to apparatus claims. See, e.g., Schriber-Schroth v.
Cleveland Trust, 305 U.S. 47, 61 (1938) (invalidating patent claims to
pistons for an internal combustion engine with a “laterally flexible web” for
lack of written description support); Permutit Co. v. Graver Corp., 284 U.S.
52, 55 (1931) (invalidating claims to an apparatus for softening water for
lack of written description support). Moreover, on multiple occasions the
Federal Circuit has analyzed whether a genus representing just one element
of a non-method claim satisfied the written description requirement. See,
e.g., Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1352 (Fed.
Cir. 2011) (analyzing the written description requirement for a “genus
consist[ing] of only two species, a multiplexed and a non-multiplexed bus,”
in claims to a synchronous dynamic random access memory device); Bilstad
v. Wakalopulos, 386 F.3d 1116 (Fed. Cir. 2004) (analyzing the written
description requirement for a “plurality of directions” in claims to a
sterilization apparatus); In re Curtis, 354 F.3d 1347, 1352 (Fed. Cir. 2004)
(determining that genus of “friction enhancing coatings” in claims to a
dental floss lacked adequate written description in alleged priority
application).
We are also unconvinced by Appellants’ argument that the written
description requirement is met because the recitation of DNA and RNA in
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the apparatus claims is analogous to the recitation of another generic, but
well-known chemical group, e.g., alkanes, in an apparatus claim. Appeal Br.
18–19. As an initial matter, we are unaware of any case stating this
proposition (i.e., that any and all DNAs and RNAs represent a well-defined
genus such that no examples are needed to satisfy the written description
requirement). Nevertheless, we note that “nanowires” are not limited to just
DNAs and RNAs, but also encompass any and all “peptide nucleic acid,
locked nucleic acid, charged polypeptide chain, [and] charged polymer.” It
could hardly be said that such a diverse group of elements are as well-
defined as “alkanes.” Also, the written description and enablement
requirements are distinct, and the intimation that a skilled artisan could
select a nanowire through experimentation does not show that Appellants
sufficiently possessed a genus of nanowires. See, e.g., In re DiLeone, 436
F.2d 1404, 1405 (CCPA 1971) (“[I]t is possible for a specification to enable
the practice of an invention as broadly as it is claimed, and still not describe
that invention.”).
In sum, Appellants have not disclosed any nanowires, and the
Specification provides insufficient relevant identifying characteristics of the
nanowires to show that Appellants “had possession of” and “actually
invented” the claimed subject matter. Ariad, 598 F.3d at 1351. Thus, we
agree with the Examiner that the claims lack adequate written description.

C. Enablement
The Examiner also rejected claims 40–45 under 35 U.S.C. § 112, ¶ 1,
for lack of enablement. Final Off. Act. 10–13. The first paragraph of § 112
requires that the specification enable a person of ordinary skill in the art “to
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make and use the invention.” 35 U.S.C. § 112, ¶ 1 (2011). The enablement
requirement is met when the skilled artisan, having read the specification,
could practice the claimed invention without “undue experimentation.” In re
Wands, 858 F.2d 731, 736–37 (Fed. Cir. 1988). “Whether undue
experimentation is needed is not a single, simple factual determination, but
rather is a conclusion reached by weighing many factual considerations,”
including:
(1) the quantity of experimentation necessary, (2) the amount
of direction or guidance presented, (3) the presence or absence
of working examples, (4) the nature of the invention, (5) the
state of the prior art, (6) the relative skill of those in the art, (7)
the predictability or unpredictability of the art, and (8) the
breadth of the claims.
Id. at 737 (“the Wands factors”).
We must reverse this rejection because the Examiner did not support
the enablement rejection by a preponderance of the evidence. As an initial
matter, the Examiner appears to state that the claims lack enablement as to
what “properties” of the “analytes” the analytical device may detect. Final
Off. Act. 7. The Examiner then states that the “analytes” may be “each and
every conceivable ‘molecule of DNA, RNA, peptide nucleic acid, locked
nucleic acid, charged polypeptide chain, or charged polymer’ that any one
would ever wish to detect, be it known at the time of filing or discovered at
some future date.” Id. (quoting claim 40). Thus, it is unclear whether the
Examiner objects to the breadth of the “properties” or to the “analytes”
themselves.
As to the analytes, we agree with the Examiner that, in some
embodiments, the thing to be detected appears to be the “analyte” itself. See
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Spec. 22:24. But, in other embodiments, the thing to be detected appears to
be a separate “evaluation object” that binds to the “analyte.” See id. at 8:6–2.
In the latter type of embodiments, the “analyte 7” comprises a “responding
part 5,” a “fluorescently-labeled part 4,” and an “evaluation object binding
part 6.” This analyte tests for the “evaluation object 13.” Id. at 34:3–23.
Again, it is unclear as to which type of “analyte” the Examiner finds not
enabled. Indeed, as Appellants have explained, “a molecule of DNA, RNA,
peptide nucleic acid, locked nucleic acid, charged polypeptide chain, or
charged polymer” in claim 40 represents the “nanowire,” rather than
necessarily the “analyte.” Appeal Br. 16; see also id. at 23.
We also take into account that, although the Examiner appears to have
considered the Wands factors, the Examiner only makes conclusory
statements as to the implications of each with respect to the claimed
invention. Final Off. Act. 11–13. For example, the Examiner states that
“the quantity of experimentation necessary is great” and would take many
“man years” to practice the claimed invention, but provides no evidence
supporting this assertion. See Appeal Br. 23. Thus, we must reverse due to
a lack of a preponderance of the evidence.

D. Anticipation
A claim is anticipated, and therefore unpatentable under 35 U.S.C.
§ 102, if all of its limitations are disclosed either explicitly or inherently in a
single prior art reference. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997). The Examiner found that Nakajima anticipates representative claim
40 under § 102(e) because, although Nakajima does not use the term
“nanowire,” Nakajima clearly discloses a “responding part” that “preferably
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comprises at least one material selected from the group consisting of
proteins, DNAs, RNAs,” etc. Final Off. Act. 14–15 (citing Nakajima at
¶¶ 113–14). The Examiner also found that Appellants’ Specification teaches
that “the responding part” can be a “wiry formation,” i.e., “nanowire,” and
therefore the claimed “nanowire” element is satisfied as by Nakajima’s
“responding part.” Id. at 14.
On appeal, Appellants do not challenge the Examiner’s findings as to
“nanowire,” but instead assert that Nakajima fails to disclose an “aspect ratio
of the length to diameter of the nanowire is not less than 2:1.” Appeal Br.
25. The Examiner acknowledges that Nakajima fails to “positively recite”
that limitation. Ans. 39. But, the Examiner explains, because the
“responding parts” of both disclosures can be the same materials and
because Appellants have asserted that DNAs, RNAs, etc. represent well-
defined chemicals, “there is no material difference between the disclosed
device of Nakajima et al. and the device claimed instantly.” Ans. 40; Final
Off. Act. 15. The Examiner comes to that finding based on the axiom that
“a chemical compound and its properties are inseparable.” Final Off. Act.
15.
The issue before us is whether Nakajima’s disclosure anticipates a
nanowire (i.e., responding part) having an “aspect ratio of the length to
diameter of the nanowire is not less than 2:1.” Appeal Br. 28 (claim 40).
We resolve this issue by finding that Nakajima’s disclosure provides for a
range of nanowires: DNAs (for example) having any and all length to
diameter ratios. Indeed, Nakajima states that it is preferable that the distance
between the carrier body and the fluorescence-labeled part can be varied by
the responding part. Nakajima ¶ 21. Appellants, on the other hand, only
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claim nanowires having at least a 2:1 length to diameter ratio range. The
Specification teaches that single-stranded DNA, for example, has a diameter
of about 1.1 nm and double-stranded DNA has a diameter of about 2 nm.
Spec. 52:21–24, 53:24–27.
The Federal Circuit analyzed a similar fact pattern in ClearValue, Inc.
v. Pearl River Polymers, Inc., 668 F.3d 1340 (Fed. Cir. 2012). In that case,
the Federal Circuit considered whether a method for clarifying water with an
alkalinity range “of 150 ppm or less” anticipated a range of “less than or
equal to 50 ppm.” Id. at 1344–45. The Court held that the narrower
alkalinity range was anticipated, in part, because “there [was] no allegation
of criticality or any evidence demonstrating any difference across the range.”
Id. at 1345. Similarly here, we find that the narrower range (length to
diameter ratio of not less than 2:1) is anticipated by the broader range
(encompassing all length to diameter ratios). Appellants do not state that the
2:1 length to diameter ratio is critical, nor do Appellants allege that
Nakajima’s device is not enabled for the narrower range. Thus, for the
reasons discussed above, we find that the preponderance of the evidence
supports the Examiner’s anticipation rejection.
The Examiner also rejected claims 40–45 under § 102(f) “because the
applicant did not invent the claimed subject matter.” Final Off. Act. 15.
The Examiner explained that Nakajima discloses the claimed invention “and
has but four named co-inventors, only two of which are common with the
instant application.” Id. In the Answer, the Examiner elaborated that “when
as here there are multiple applications disclosing the same invention, yet
have different inventors of which some are shared, a reasonable question as
to just who constitutes the correct inventors exists.” Ans. 40. Appellants
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counter that the Appellants have all signed a declaration attesting to be the
inventors of the claimed invention. Appeal Br. 26.
For clarity purposes, the following table provides the listed inventors
of both Nakajima and the present application in alphabetical order. The
common inventors are showed in bold-face type.
Present Application Nakajima
GERHARD ABSTREITE TSUYOSHI FUJIHARA
KENJI ARINAGA SHOZO FUJITA
TSUYOSHI FUJIHARA KAORU NAKAJIMA
SHOZO FUJITA SHUNSAKU TAKEISHI
ULRICH RANT
MARC TORNOW

We find that the Examiner’s rejection is not supported by a
preponderance of the evidence. Section 102(f) “bars the issuance of a patent
where an applicant did not invent the subject matter being claimed and
sought to be patented. . . . The examiner must presume the applicants are the
proper inventors unless there is proof that another made the invention and
that applicant derived the invention from the true inventor.” MPEP
§ 706.02(g). Here, there is insufficient persuasive evidence that Appellants
did not invent the claimed subject matter. The Examiner relies on the
similarities between the disclosure of the present application and that of
Nakajima, but § 102(f) generally requires more—i.e., that one “derived” the
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invention from another. And because we do not consider those similarities
sufficient proof of derivation, we reverse this rejection.

SUMMARY
We affirm the final rejection of claim 40 under 35 U.S.C. § 112, ¶ 1,
for lack of written description. Claims 41–45 fall with claim 40.
We also affirm the final rejection of claim 40 under § 102(e) for
anticipation by Nakajima. Claims 41–45 fall with claim 40.
We affirm the final rejection of claim 43 under 35 U.S.C. § 112, ¶ 2,
for indefiniteness, but reverse the final rejection under this section as to
claims 40–42, 44, and 45.
We reverse the final rejection of claims 40–45 under 35 U.S.C. § 112,
¶ 1, for lack of enablement.
We also reverse the final rejection of claims 40–45 under § 102(f).

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED