Appeal No. 1998-2043
Application No. 08/606,601
undisclosed by appellants would not require, for the skilled artisan, more than a modicum
of experimentation to construct the desired expedients.
Appellants have submitted no evidence in response to the rejection of claims 1-12
under 35 U.S.C. § 112, first paragraph. However, since the rejection fails to consider the
evidence as a whole, we hold that the examiner’s initial burden has not been met, and
there was no requirement for evidence in rebuttal. We do not sustain the rejection.
Finally, we consider the rejection of claims 7-10 under 35 U.S.C. § 112, first
paragraph, as set out on pages 2-3 of the Final Rejection. The rejection appears to be
based on the position that critical limitations with respect to “timing” of movements are
missing from the claims. See In re Mayhew, 527 F.2d 1229, 1233, 188 USPQ 356, 358
(CCPA 1976) (affirming rejection under 35 U.S.C. § 112, first paragraph, because claims
which failed to recite essential features of invention were not supported by an enabling
disclosure).
However, as we noted in the analysis of the requirements of claim 7 in our review of
the rejection for indefiniteness, supra, claims 7-10 are drawn to an apparatus. As a factual
matter, timing of movements cannot be considered critical when the invention is defined by
mechanical structures, as opposed to being defined by process steps. We do not sustain
the rejection of claims 7-10 under 35 U.S.C. § 112, first paragraph.
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