Appeal No. 1997-0668
Application No. 08/232,854
disclosure at the bottom of page 7 and page 8 [of the subject
specification] states that pressure is built up in storage
space 12 such as by a piston but does not teach how a piston
can be arranged or used to build up pressure in the system or
any type of best mold [sic, mode]” (Answer, page 4). We do
not consider the examiner’s position on this matter to be well
founded.
In the first place, the enablement and best mode
requirements in the first paragraph of § 112 relate to the
invention which has been claimed, and, as properly indicated
by the appellant, none of the appealed claims are directed to
an invention which includes use of the piston referred to on
specification pages 7 and 8. Indeed, again as the appellant
has properly indicated, certain of the claims on appeal are
directed to an invention which would exclude use of such a
piston. Moreover, and in any event, it is our opinion that
the examiner has failed to advance acceptable reasoning
inconsistent with enablement in accordance with her initial
burden of proof. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563 (CCPA 1982). Further regarding the issue of
enablement, we consider the appellant to have proffered
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