Appeal 2006-2249
Application 10/429,172
practice it. In re Kamal, 398 F.2d 867, 871, 158 USPQ 320, 323 (CCPA
1968) citing In re Grimme, 274 F.2d 949, 952, 124 USPQ 499, 501 (CCPA
1960) (explaining that a specification need not disclose every possible
configuration of a claim term). Moreover, disclosure in a specification
sufficient to enable practice of the invention by one skilled in the art, taking
into consideration obvious modifications of exemplary embodiments, is all
that is required to satisfy the enablement requirement of 35 U.S.C. § 112, 1st
paragraph. In re Dinh-Nguyen, 492 F.2d 856, 858-59, 181 USPQ 46, 48
(CCPA 1974). It is not a function of the claims to specifically exclude
possible inoperative or ineffective embodiments that may be encompassed
by a claim. Id.
Appellants’ Specification describes that the “recapture mechanism”
has “a first surface on the anchor” (Figure 5, “proximal portion” 145 and
146) and “a second surface on the anchor (Figure 5, “distal portion” 147 and
148) such that the slope of proximal portions 145 and 146 are less than (i.e.,
more horizontal than) the slope of the distal sections 147 and 148
(Specification 12:19-25). This description enables one of ordinary skill in
the art to make or use the subject matter of claims 5 and 6.
Accordingly, we reverse the Examiner’s 35 U.S.C. § 112, 1st
paragraph, rejection of claims 5 and 6.
DECISION
The Examiner’s rejection of claims 1-8 under § 102(b) over Gaber is
AFFIRMED.
The Examiner’s rejection of claims 5 and 6 as failing to satisfy the
enablement requirement of 35 U.S.C. § 112, 1st paragraph, is REVERSED.
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