Appeal No. 96-0814
Application 08/066,331
2 of the main brief that the problem with prior art fixtures that
provide electrical and/or hydraulic connections to the fixture
mounted on the movable work table is that “[s]uch hoses and wires
can interfere with the machining operation,” and the statement on
page 3 of the main brief that “[a]pplicants’ mechanism avoids any
hoses or electrical connections to the mechanism mounted on the
work table of the machine tool” (main brief, page 3) only serves
to add to our uncertainly. While we appreciate that enablement
is determined through the eyes of a person of ordinary skill in
the art, and that a certain amount of experimentation may be
required, in our opinion the amount of experimentation required
to practice the method of dependent claim 10 would require
ingenuity well beyond that expected of the ordinarily skilled
artisan.
Appellants have not specifically addressed claim 10, instead
contending that “if the disclosure is ‘enabling’ with respect to
independent claim 1, it will likely be similarly ‘enabling’ with
respect to dependent claims 4-6 and 9-10” (main brief, page 5).
We do not agree. In our view, the examiner’s concerns regarding
enablement are justified with respect to claim 10. In that
illustrated in the drawings, and where the cooperation between
the pin 23 and the end portion of the lever 31 is explained in
the specification.
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