Appeal No. 1997-2954
Application No. 08/401,876
examiner wrote the answer and since MPEP § 2164.08, cited by
appellants, appears to correspond to the examiner’s
statements, we agree with appellants that MPEP
§ 2164.08 is apparently the appropriate section for our
consideration. Appellants state and we agree (brief, page 7)
that according to the criteria set forth in MPEP § 2164.08,
the scope of the claims before us on appeal does not exceed
the level of enablement provided by appellants’ specification
and one skilled in the art at the time the invention was made
would clearly be able to practice the invention claimed
without using the rotary platen and without undue
experimentation. With regard to the examiner’s basis for the
lack of enablement of claims 22-45 according to MPEP §
2164.08, the examiner provides no factual support for either
lack of enablement or lack of written description of the
subject matter set forth in the claims on appeal. The
examiner’s position (answer, page 4) is that the claims on
appeal are of a broader scope than appellants’ originally
filed claims were intended to cover because the claims were
originally limited to a rotatable platen. We agree with
appellants (brief, page 4) that the examiner’s position is
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