Appeal No. 2000-1763 Page 8
Application No. 09/227,037
Rejection (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 1229, 1232,
212 USPQ 561, 563-64 (CCPA 1982). In calling into question the enablement of the
appellant’s disclosure, the examiner has the initial burden of advancing acceptable reasoning
inconsistent with enablement. Id. Moreover, we note that it is the function of the specification,
not the claims, to set forth the "practical limits of operation" of an invention. One does not
look to claims to find out how to practice the invention they define, but to the specification.
See In re Johnson, 558 F.2d 1008, 1017, 194 USPQ 187, 195 (CCPA 1977).
In rejecting the claims, the examiner takes the position that the specification, while being
enabling for a process using a first and second die, does not reasonably convey enablement for
a single die or no dies (answer, page 3). At the outset, we note that, while claims 1-14 do not
expressly require more than one die and claim 15 does not expressly require any die, none of
the claims in this reissue application explicitly precludes the use of first and second dies. The
claims recite a method of forming a tubular device adapted for releasable and sealing
connection to a medical instrument having a nipple, the method including the steps of forming a
first pliable material into a tube and forming a second harder material into a tube-support
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