Appeal No. 1998-1711 Page 7
Application No. 08/506,387
For the foregoing reasons, we shall not sustain the examiner's rejection of claims 1-10
as being indefinite under 35 U.S.C. § 112, second paragraph.
The rejection under 35 U.S.C. § 112, first paragraph
The examiner has rejected claims 4-7 under 35 U.S.C. § 112, first paragraph, as
containing subject matter which was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventors, at the time the application
was filed, had possession of the claimed invention.
As discussed above, it appears to us, in light of the examiner's explanation of the
rejection, that the examiner's actual basis for the rejection is that the specification fails to
adequately describe the invention so as to enable one of ordinary skill in the art to make and/or
use the same (i.e., lack of enablement). In making this rejection, the examiner alleges that the
coolant fluid expansion chamber has not been adequately described and questions the sense in which
the term "expansion" is used. Further, the examiner contends that a hydraulic braking circuit or
pressurized fluid accumulator is not shown or described (answer, page 4).
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
undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563-64 (CCPA
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