Appeal No. 97-2602
Application 08/422,795
U.S.C. § 102(b) as being anticipated by Miyairi, and claims 3 and 4 stand rejected under
35 U.S.C. § 103 as being unpatentable over Miyairi.
Reference is made to the appellants’ main and reply briefs (Paper Nos. 8 and 11)
and to the examiner’s final rejection and main and supplemental answers (Paper Nos. 5,
10 and 13) for the respective positions of the appellants and the examiner with regard to
the merits of these rejections.
The examiner’s explanation of the 35 U.S.C. § 112, first paragraph, rejection
indicates that it is based on an alleged failure of the appellants’ specification to comply
with the enablement requirement of this section of the statute. The dispositive issue with
regard to enablement is whether the appellants’ disclosure, considering the level of
ordinary skill in the art as of the date of the appellants’ application, would have enabled a
person of such skill to make and use the appellants' invention without undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563-64 (CCPA
1982).
In essence, the examiner contends that the appellants’ disclosure is non-enabling
because the description therein of the valve disk element of the claimed invention as being
a perpendicular angle transported disk that appears to be the diagonal cross-section of a
round rod (see, for example, specification pages 2, 3 and 5) is unclear. The appellants, on
the other hand, submit that a person of ordinary skill in the art would have readily
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