Appeal No. 98-2810
Application 08/471,457
this conclusion by presenting evidence to prove that the disclosure in the specification is enabling. See
In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA 1973), cert. denied, 416 U.S. 935
(1974); In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973).
In the case before us, after reviewing the examiner’s position, the disclosure on page 3, lines
23-25, and on page 7, lines 3-9, of appellant’s specification and the argument set forth in the brief
(page 9), we are of the opinion that the examiner has clearly not met his burden of advancing
acceptable reasoning inconsistent with enablement. Like appellant, we are of the view that the original
disclosure regarding the shaving kit of claim 19 on appeal would have readily apprised one of ordinary
skill in the art that such kit (Figure 4) is useful for medical purposes, i.e., that the kit is designed
primarily for a single-use medical purpose such as shaving a portion of a patient’s body to remove hair
therefrom prior to surgery. In our view, the examiner has advanced no reason why what is clearly a
simple shaving kit useful for medical purposes would require undue experimentation on the part of one
of ordinary skill in the art in order to implement in the context of appellant’s invention.
After a careful consideration of appellant’s disclosure and of the arguments on both sides, it is
our opinion that the level of skill in this art is sufficiently high that the ordinarily skilled
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