Appeal 2007-0022
Application 10/148,935
the level of ordinary skill in the art. In addition to our review of the Graham
factors, we also consider “whether a person of ordinary skill in the art, possessed
with the understandings and knowledge reflected in the prior art, and motivated by
the general problem facing the inventor, would have been led to make the
combination recited in the claims.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329, 1337 (Fed. Cir. 2006). “From this it may be determined whether the overall
disclosures, teachings, and suggestions of the prior art, and the level of skill in the
art – i.e., the understandings and knowledge of persons having ordinary skill in the
art at the time of the invention-support the legal conclusion of obviousness.” Id.
(internal citations omitted).
ANALYSIS
The Examiner bases his rejection of claims 14-21 under 35 U.S.C. § 112,
first paragraph, on a finding that it is not clear what is meant by the claim
limitation that the discs are axially connected at a diameter that is greater than 80%
of the outside diameter of the flywheel. We find that the Examiner has not met his
burden of setting forth a reasonable explanation as to why the scope of protection
provided by these claims is not adequately enabled by the description of the
invention provided in the specification of the application. The Examiner has not
provided any discussion of why the Specification is not sufficiently complete to
enable one of ordinary skill in the art to make and use the claimed invention
without undue experimentation. What the Examiner appears to be arguing is that
the claim is indefinite under 35 U.S.C. § 112, second paragraph, or lacks sufficient
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