Appeal No. 1999-0220 Page 8
Application No. 08/540,323
appears to be fatally deficient since it incorrectly
disclosed the operation of the device.
The appellant argues (brief, pp. 7-14) that the claimed
invention is enabled and that deformation of the ram by the
braking surfaces is not a critical feature of the claimed
invention.
We agree with the appellant that the claimed invention is
enabled since the claims under appeal are generic as to
whether the braking surfaces cause either (1) elastic
deformation of the ram (i.e., the second cylinder); (2)
permanent deformation of the ram; or (3) no deformation of the
ram. That, being the case, the examiner has not met his
burden of proof by advancing acceptable reasoning inconsistent
with enablement as to the claimed invention.
Additionally, it is our determination that one of
ordinary skill in the art as of the date of the appellant's
application would have taken the appellant's disclosure, as a
whole, to mean that the braking surfaces cause elastic
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