Ex Parte Groger et al

Board of Patent Appeals and Interferences

Apr 10, 2002

08553773 (B.P.A.I. Apr. 10, 2002)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HOWARD P. GROGER, SHUFANG LUO, K. PETER LO, MARTIN
WEISS, JAMES M. SLOAN, and RUSSELL J. CHURCHILL
____________
Appeal No. 2000-0391
Application No. 08/553,773
____________
REHEARING
____________
Before KIMLIN, WALTZ, and PAWLIKOWSKI, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Pursuant to the provisions of 37 CFR § 1.197(b)(1997),
appellants have submitted a Request for Rehearing dated Mar. 14,
2002, (hereafter “Request”), of our Decision dated Feb. 15, 2002,
affirming the examiner’s rejection of claims 1, 10, and 19-26
under 35 U.S.C. § 112, first paragraph, for lack of enablement,
Appeal No. 2000-0391
Application No. 08/553,773
2
while reversing the examiner’s rejection under the same basis of
claims 2-4, 6-7, 11 and 27-28 (Decision, page 2).
Appellants request rehearing based on only one issue.
Appellants argue that “[t]he Board has found that all necessary
§ 112 first paragraph support exists for narrower dependent
claims (B)” and “[t]he broad claims [designated as “A”] are thus
logically shown and admitted to be supported and to meet all
statutory requirements” (Request, page 2).
Appellants’ argument is not well taken. It is well settled
that “the scope of the claims must bear a reasonable correlation
to the scope of enablement provided by the specification to
persons of ordinary skill in the art.” In re Fisher, 427 F.2d
833, 839, 166 USPQ 18, 24 (CCPA 1970)(see the Decision, page 8).
In an analysis of a rejection under the enablement requirement of
section 112, a relevant inquiry is “whether the scope of
enablement provided to one of ordinary skill in the art by the
disclosure is such as to be commensurate with the scope of
protection sought by the claims.” In re Moore, 439 F.2d 1232,
1236, 169 USPQ 236, 239 (CCPA 1971). What is necessary to meet
the enablement requirement is that the inventor “provide a
disclosure sufficient to enable one skilled in the art to carry
out the invention commensurate with the scope of [his] claims.”
Appeal No. 2000-0391
Application No. 08/553,773
3
Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1213, 18
USPQ2d 1016, 1027 (Fed. Cir. 1991). Accordingly, the scope of
the claim must be considered in any analysis under section 112.
Therefore, the enablement disclosure may be commensurate in scope
with narrower claims while not sufficiently enabling for claims
of a broader scope.
The scope of each group of claims considered in the Decision
is very different, as noted by appellants themselves in the Brief
(pages 13-14; see the Decision, page 9). The scope of the claims
included in the affirmance of the examiner’s rejection did not
specify the dye, i.e., the dye and polymer matrix must both be
determined for any given analyte (Decision, page 8). Similarly,
the scope of the claims included in the reversal of the
examiner’s rejection was much more narrow, i.e., the dye was
specified (Decision, page 9). Accordingly, the scope of
enablement required varied with the scope of the claims.
Appellants have not cited any legal precedent or reasoning
that supports their argument. Appellants’ citation of In re
Bundy, 209 USPQ 48 (CCPA 1981)(Request, page 2), does not appear
to support their argument since the holding in this decision is
mainly directed to best mode and utility issues, not enablement
for the varying scope of claims as presented herein. As
Appeal No. 2000-0391
Application No. 08/553,773
4
discussed above, the analysis of the examiner’s rejection in our
Decision took into account the scope of the claims, as required
by the statute and the holdings of our reviewing court.
Accordingly, we do not find in the Request any argument
convincing us of error in the conclusions we reached in our
Decision.
Therefore, appellants’ Request for Rehearing is denied.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
DENIED
Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Thomas A. Waltz ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Beverly A. Pawlikowski )
Administrative Patent Judge )
TAW/tdl
Appeal No. 2000-0391
Application No. 08/553,773
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