Appeal No. 1999-0738
Application No. 08/474,195
lose] its bias feature and adopt the bias feature of
the outer layer, or the biasing forces of the two
layers would simply cancel one another out to render
the elongated element biasless. Furthermore, the
disclosure on page 21 does not fully explain how the
element can be wound around a plurality of axes.
These issues indicate that the specification would
not have taught one skilled in the art how to make
and/or use the full scope of the claimed invention
without undue experimentation. [Answer, page 5;
emphasis added].
Thus, while the examiner’s statement of the rejection on
page 4 of the answer would appear to indicate that the
standing rejection under § 112 is based on a failure of the
disclosure to meet the written description requirement of the
first paragraph of the statute, the explanation of the
rejection on page 5 of the answer makes clear that the
rejection is in fact based on the enablement requirement of §
112.
The dispositive issue with regard to the enablement
requirement is whether appellant’s disclosure, considering the
level of ordinary skill in the art as of the date of
appellant’s application, would have enabled a person of such
skill to make and use the claimed invention without undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212
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