Ex parte YAMAZAKI

from Ex parte YAMAZAKI

Of a rejection for lack of utility:


While the Examiner emphasizes that the Specification provides no
evidence of an operative embodiment therein “which can operate in the
entire claimed range of ‘0.3 microns or less’” (Ans. 16-17), that is not a
requirement for utility. There is no requirement that a full range recited in a
claim must be supported by working embodiments. As the predecessor of
our reviewing court stated:

[C]laims are not to be considered in a vacuum, “but always in
light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art.”
When considered in the light of the prior art and the
specification, claims otherwise indefinite may be found
reasonably definite.

In re Kroekel, 504 F.2d 1143, 1146 (CCPA 1974)(citing In re Moore, 439
F.2d 1232 (CCPA 1971)).

A rejection based on indefiniteness, or utility, is not necessarily valid
simply because the “claims may be read in theory to include compositions
that are impossible in fact to formulate.” Id. The fact that claim 28 could be
made to read upon a device with a zero or close to zero channel length, i.e.,
an inoperative device, does not require that the claim be found to have no
utility. Read in the context of the Specification (FF 3), a practical range less
than 0.3 microns can be determined, such that one of ordinary skill in the art
would not have viewed the claim as reading upon non-working
embodiments. As such, we conclude that claim 28 is not inoperative and
thus does not lack utility under 35 U.S.C. § 101.