Appeal No. 96-4162
Application 08/313,901
portion to contain a beverage [answer, page 4].
The examiner further argues that different methods of forming a hollow container are
possible and that all of these different methods would have different effects on the opening
of the mold and removal of the molded part (answer, page 7).
On page 7 of the main brief, the appellant argues:
It is noted that although Examiner complains that the
specification fails to adequately teach how to make and/or use
the invention, i.e., it fails to provide an enabling disclosure, the
Examiner has not indicated any aspect of the disclosure which
he does not understand, or any aspect which is necessary to
permit a person skilled in the art to carry out the invention. Her
comments are nothing more than a recitation of Section 112
itself.
With regard to the examiner’s comments on the different effects of the different
possible methods of forming hollow containers, the appellant urges that the examiner has
not elaborated on why these different effects would have any effect on the appellant’s
invention “which concerns itself only with the outer surface of the molded container, rather
than the inner surface” (reply brief, page 3).
Insofar as the enablement requirement is concerned, the dispositive issue 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
4
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