Ex parte HAMMER - Page 4




          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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