Ex parte BRIAN E. FITZGERALD et al. - Page 8

          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               
               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.                                                          

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  Next 

Last modified: November 3, 2007