Appeal No. 96-1870
Application 08/088,570
there is no clear and proper disclosure therein of the
structure and operation of the embodiment of Fig. 11
and how a flexible connector as recited in claim 5 is
incorporated therein. For example, the specification
fails to properly disclose that the embodiment of Figs.
11 and 12 includes a flexible connector. Further, it
is unclear how the toothed wheels will be able to
engage the first and second racks if a flexible
connector is connected to the toothed wheels [answer,
Paper No. 19, page 3].
The examiner’s explanation indicates that the rejection
at issue is based on an alleged failure of the appellant’s
specification to comply with the enablement requirement of
35 U.S.C. § 112, first paragraph. The dispositive issue with
regard to the enablement requirement is whether the appellant's
disclosure, considering the level of ordinary skill in the art as
of the date of the appellant's application, would have enabled a
person of such skill to make and use the appellant's invention
without undue experimentation. In re Strahilevitz, 668 F.2d
1229, 1232, 212 USPQ 561, 563-64 (CCPA 1982). In calling into
question the enablement of the appellant's disclosure, the
examiner has the initial burden of advancing acceptable reasoning
inconsistent with enablement. Id. In the present case, the
examiner has failed to meet this burden.
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