Appeal No. 2002-1837
Application 09/315,411
II. The merits of the appealed rejection
The examiner considers the appellants’ specification to be
non-enabling with respect to the subject matter recited in claims
14 and 15 because:
[t]he specification fails to disclose how the sliding
valve is moved from the open position shown in Figures
12-13 to the closed position shown in Figures 14-15.
The specification discloses on page 6, lines 18-20 that
“[a]t the conclusion of the cementing step, the sliding
valve 48 is actuated in a known manner to close it off,
as shown in Figure 14.” However, conventional sliding
valves have a sliding sleeve mounted within a tubing or
casing. The sliding sleeve is usually moved between
its open and closed positions by a shifting tool or by
fluid pressure within the tubing or casing.
Appellants’ sliding sleeve shown in Figures 12-15 is
located outside of the tubular 56. It is not clear
what is the “known manner” to close the valve 48 off
[answer, pages 4 and 5].
The dispositive issue with respect to the enablement
requirement of § 112, ¶ 1, is whether the appellants’ disclosure,
considering the level of ordinary skill in the art as of the date
of the application, would have enabled a person of such skill to
make and use the claimed invention without undue experimentation.
In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563-64
(CCPA 1982). In calling into question the enablement of the
disclosure, the examiner has the initial burden of advancing
acceptable reasoning inconsistent with enablement. Id.
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