Appeal No. 97-2626
Application 08/234,502
would be necessary in order to determine how to initiate,
activate, and reset the means for urging. (Findings 4a-4c).
The examiner has failed to demonstrate that given the specific
embodiments of figures 8-15 and 18-20, that undue
experimentation would be necessary to make or use an urging
means that would not interfere with the blocking and detecting
means. (Finding 5).
The examiner provides no prior art or other relevant
evidence to support his argument that the specification is
nonenabling. Furthermore, there is nothing on the record
before us that suggests that the examiner considered the
factors for determining whether experimentation is undue, as
provided in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400,
1404 (Fed. Cir. 1988), citing with approval to Ex parte
Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986).
Because the examiner has failed to meet his burden of
proving a lack of enablement, the rejection of claims 49-52
and 57-65 under 35 U.S.C. § 112, first paragraph will be
reversed.
2. The prior art rejections
Based on the record before us, the examiner has failed to
set forth a prima facie case of obviousness. The Narita ‘93
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