Appeal No. 96-1121
Application 07/873,309
and it is not apparent to us, why one of ordinary skill in the
art, in view of appellants’ specification, could not have made
and used appellants’ claimed invention without undue
experimentation. Accordingly, we find that the examiner has
not carried his burden of establishing a prima facie case of
lack of enablement.
Rejection under 35 U.S.C. § 112, second paragraph
The examiner asserts that there is no antecedent basis
for “the other of said supporting and supported members” in
element (e) of claim 1 and element (f) of claim 12 (answer,
page 5).
The preamble of each of claims 1 and 12 recites that the
fluid mounting is for connecting a supported member to a
supporting member. Element (a) of each claim recites that the
housing is to be attached to one of these members. Element
(e) of claim 1 and element (f) of claim 12 state that the
piston is to be attached to the other member. Thus, the
meaning of “the other of said supporting and supported
members” in claims 1 and 12 is clear. We therefore will not
sustain the rejection under 35 U.S.C. § 112, second paragraph.
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