Appeal No. 95-2788
Application 08/038,430
not be achieved and, it follows, for which there are no enabling
disclosures.
We agree with appellants [brief, pages 9-10] that it
is not proper to reject a claim under 35
U.S.C. 112 on the basis of lack of
enablement because the claim reads on
subject matter that is inoperative only
on the basis of unreasonable assumptions
or without limitations that would be
implied by one with ordinary skill in
the art.
Further, appellants point out [brief, page 11], and the
examiner does not deny, that the invention uses well known
compounds with well known wear factor characteristics and that
the invention does not lie in the production of the material used
for the casing, citing the "Lubricomp" article as evidence of the
general availability of such material. Since there is general
availability of a material having the claimed characteristics and
this is well known, the examiner's rejection based on
nonenablement of the claimed subject matter does not appear to be
well-founded.
With regard to appellants' reference to U.S. Patent No.
5,276,675 and the similarity of the claims therein to the claims
now before us, while the mistakes of an examiner in a previous
case does not bind the hands of a later examiner with similar
claims if a proper rejection lies, in the instant case, it is,
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