Appeal No. 1998-1540
Application No. 08/317,390
We believe that it is not enablement, per se, that concerns the examiner, rather, it
appears that the examiner is really bothered by appellants possibly now claiming a
nonelected invention. Thus, the examiner has taken the position that for the Figure 2
embodiment, which was previously elected by appellants, what is now claimed is allegedly
not part of that embodiment. If that is the case, we find no basis for the examiner’s
rejection under 35 U.S.C. § 112, first paragraph, since the specification, as a whole, does
provide an enabling disclosure for what is claimed. If the examiner perceives that
appellants may now be directing the claimed subject matter to a previously nonelected
invention, that would appear to us to be an objectionable matter, not subject to a rejection.
But, in any event, we find no basis for a rejection based on the enablement clause of 35
U.S.C. § 112 to lie. The examiner has presented no rational basis for challenging the
sufficiency of the disclosure with regard to any particularly claimed subject matter.
Turning now to the alternative rejection of the claims based on 35 U.S.C. § 112,
second paragraph, because the claims are indefinite, we also will not sustain this rejection.
The examiner has failed to point to any particular claim language which is allegedly
indefinite. The examiner’s basis for the rejection is that “[b]ecause appellant believes the
claims are readable on the elected invention and the examiner disagrees,
the metes and bounds of the claim(s) cannot be readily ascertained, rendering the claim(s)
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