Appeal No. 1999-0869
Application 08/644,608
claims 1-13 is enabled. As noted by appellants (Br4),
figures 2 and 3 disclose that the laser system 71 generates
and detects light because the laser beams (70a and 70b in
figure 2; 70c in figure 3) have arrows in both directions,
toward and away from the laser system 71. The specification
discloses measuring the valve needle lift with a laser system
(e.g., specification, p. 2, lines 20-25). In particular,
original claim 1, which is part of the disclosure, recites
"measuring an axial range of motion . . . by detecting the
radiation." It would have been manifestly apparent to one of
ordinary skill in the art that "detecting the radiation" must
be done with a detector appropriately placed to measure the
reflected radiation. Accordingly, we find the Examiner erred
in stating that "Appellant has made no reference to the
detection of light in the specification" (EA3).
As to the Examiner's position that it is unclear how the
detected radiation would be manipulated to determine lift of
the valve needle, Appellants argue that laser systems to sense
position by reflected light were well known to one of ordinary
skill in the art at the time of filing and, hence, did not
need to be disclosed in detail (Br7-8). It is the Examiner's
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