Ex parte BERGE et al. - Page 9




               Appeal No. 1998-0607                                                                       Page 9                 
               Application No. 08/506,857                                                                                        


               the appellants' application was filed.  Therefore, it would not even have been clear to one                       
               skilled in the art what type of movement is intended by "articulating" and "retracted" as used by                 
               the appellants.                                                                                                   
                      In order to give the appellants an opportunity to react to the additional rationale                        
               articulated above in support of the examiner's rejection of claims 4 and 5 under the second                       
               paragraph of 35 U.S.C. § 112, we designate our affirmance of this rejection as a new ground                       
               of rejection under 37 CFR § 1.196(b).                                                                             
                                                         Rejection (2)                                                           
                      The examiner's statement of the rejection of claims 4 and 5 under 35 U.S.C. § 112,                         
               first paragraph, "as containing subject matter for which the specification does not provide an                    
               adequate written description" is ambiguous as to whether the basis thereof is lack of enablement                  
               or written description.  However, the examiner's explanation of the rejection, in the response to                 
               arguments on pages 8-9 of the answer, indicates that the examiner's rejection of the claims is                    
               based on a determination that the specification does not describe the invention so as to enable a                 
               person skilled in the art to which the invention pertains to make and use the invention (i.e., lack               
               of enablement).                                                                                                   
                      Insofar as the enablement requirement is concerned, the dispositive issue is whether the                   

               appellants' disclosure, considering the level of ordinary skill in the art as of the date of the appellants'      

               application, would have enabled a person of such skill to make and use the appellants' invention without          








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