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 withoutPage: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 NextLast modified: November 3, 2007