Appeal No. 2006-1149
Application No. 10/296,406
in support of the rejections and arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the specification
complies with 35 U.S.C. § 112. We are also of the view that the evidence relied upon and
the level of skill in the particular art would have suggested to one of ordinary skill in the art
the obviousness of the invention as set forth in the claims on appeal. Accordingly, we affirm.
We first consider the examiner’s rejection of claim 20 under 35 U.S.C. §112, first
paragraph. The examiner asserts that the specification does not disclose how the spring
buckle fixes the adapter on the fuel injector [answer, page 3].
With respect to the rejection of claim 20 under 35 U.S.C. §112, first paragraph,
appellant argues:
[T]he drawings in Fig. 1 depict a portion of the adapter 1 that is below and in
contact with the spring buckle 11. The spring buckle 11 of the adapter 1 is
also held against a protruding portion of the plug-in connector 4. The
protruding portion of the plug-in connector 4 is located above the portion of
the adapter 1 that is below the spring buckle 11. Therefore, after the
protruding portion of the plug-in connector 4 is slid past the lower portion of
the adapter 1 and then past the spring buckle 11, the spring buckle 11 juts
inwardly so that it obstructs a path for sliding the plug-in connector 4 in a
reverse direction away from the adapter 1. When the spring buckle is arranged
in this manner, the positions of the adapter 1 and plug-in connector 4 with
respect to each other are maintained. The adapter is thereby fixed to the plug-
in connector 4 [see supplemental brief, pages 4 and 5, and also reply brief,
page 2].
The standard for determining whether the specification meets the enablement
requirement of 35 U.S.C. 112, first paragraph is whether undue experimentation is needed to
practice the invention. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988); United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed.
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