Appeal No. 96-3174
Application 07/970,608
undue experimentation. See In re Scarbrough, 500 F.2d 560,
566, 182 USPQ 298, 302 (CCPA 1974). At the outset, we observe
that claims 10-14, 16 and 17 do not require that the
compression of the resin takes place simultaneously with the
injection of the resin. Thus, it is not clear how the
examiner’s concerns regarding enablement are relevant to these
claims.
With respect to the remaining claims, independent claim 1
and the claims that depend therefrom require the step of
applying force to the mold members to reduce a volume of the
mold cavity and compress the resin therein simultaneously with
the injection of the resin, independent claim 18 and the
claims that depend therefrom require means for applying force
to the mold members to pressurize the resin therein
simultaneously with the injection of resin, and claim 15,
which depends from claim 10, requires that the force applying
step comprises simultaneously compressing and injecting the
resin.
Turning to appellant’s disclosure, the specification, as
originally filed, states that “[s]imultaneously with the
injection of melt, pressure is applied to reduce the volume of
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