Appeal No. 1998-0607 Page 9
Application No. 08/506,857
the appellants' application was filed. Therefore, it would not even have been clear to one
skilled in the art what type of movement is intended by "articulating" and "retracted" as used by
the appellants.
In order to give the appellants an opportunity to react to the additional rationale
articulated above in support of the examiner's rejection of claims 4 and 5 under the second
paragraph of 35 U.S.C. § 112, we designate our affirmance of this rejection as a new ground
of rejection under 37 CFR § 1.196(b).
Rejection (2)
The examiner's statement of the rejection of claims 4 and 5 under 35 U.S.C. § 112,
first paragraph, "as containing subject matter for which the specification does not provide an
adequate written description" is ambiguous as to whether the basis thereof is lack of enablement
or written description. However, the examiner's explanation of the rejection, in the response to
arguments on pages 8-9 of the answer, indicates that the examiner's rejection of the claims is
based on a determination that the specification does not describe the invention so as to enable a
person skilled in the art to which the invention pertains to make and use the invention (i.e., lack
of enablement).
Insofar as the enablement requirement is concerned, the dispositive issue is whether the
appellants' disclosure, considering the level of ordinary skill in the art as of the date of the appellants'
application, would have enabled a person of such skill to make and use the appellants' invention without
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