Appeal No. 1999-0653 Page 6
Application No. 08/226,564
is made of a compressible material "to accommodate different side wall thicknesses among
security slots" (claim 13 and specification, page 16).
In rejecting claim 13 under the first paragraph of 35 U.S.C. § 112, the examiner's
position (answer, pages 7 and 8), in essence, is that, since the head support is freely movable
within the cavity 82', the head 28, 29 is also freely axially movable relative to the mounting
end 20' of the body, thereby resulting in a loose fit of the device against the side wall 120 of
the computer equipment. In light of this axial looseness, the examiner questions why a
compressible mounting end would be required to accommodate different side wall thicknesses
and how a compressible mounting end would be used to do so. Therefore, the examiner has
rejected claim 13 under the first paragraph of 35 U.S.C. § 112 on the basis that the
specification fails to adequately teach how to make and/or use the claimed invention (lack of
enablement).
While we do not agree with the appellant's statement (main brief, page 6) that "[i]t is
abundantly clear that the compressible collar 20' contracts as the screw 58 is tightened against
the internal threads of the adjustable head support 80'," we do note that, even with the head
support 80' positioned toward the mounting end of the body such that it abuts against the
retaining rim 111, the axial spacing between the transverse limb 28 of the head and the end
face of the mounting end 20' may still not be sufficient to accommodate a particularly thick
computer side wall. From our perspective, one of ordinary skill in the art would understand
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