Ex parte DATON-LOVETT - Page 4




          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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