Appeal No. 1998-2817
Application No. 08/455,366
extended 300 mm or 6% of it length (length = 1/2 the
circumference) would produce greater stress and
greater decay in the waist system while using the
same test procedures. No recitation of the length
makes the test indefinite. (emphasis in original)
The examiner’s statement that the lack of any recitation
of length makes the test indefinite, indicates to us that the
examiner has confused the requirement of 35 U.S.C. § 112,
second
paragraph, that the claims particularly point out and
distinctly
claim the invention, with the requirement of 35 U.S.C. § 112,
first paragraph, that the specification describe how to make
and use the invention. While we recognize that the claims do
not require the closed loop waist elastic system to be any
particular length, we fail to understand why the specification
is not enabling as a result. A claim which omits matter
disclosed to be essential to the invention as described in the
specification or in other statements of record may be rejected
under 35 U.S.C. 112, first paragraph, as not enabling.
Mayhew, id. Such essential matter may include missing
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