Appeal No. 1999-2852
Application 08/681,898
A disclosure of an utility satisfies, the utility
requirement of § 101 unless there are reasons for the artisan
to question the truth of such disclosure. In re Gaubert, 524
F.2d 1222, 1224, 187 USPQ 664, 666 (CCPA 1975); In re Langer,
503 F.2d 1380, 1391-92, 183 USPQ 288, 297 (CCPA 1974).
To comply with the clause of the first paragraph of 35
U.S.C. § 112, the disclosure must adequately present the
claimed invention so that the artisan can practice it without
undue experimentation, In re Scarbrough, 500 F.2d 560, 566,
182 USPQ 298, 302 (CCPA 1974); In re Brandstadter, 484 F.2d
1395, 1407, 179 USPQ 286, 294-95 (CCPA 1973).
In support of the rejections the examiner states:
. . . specification teaches a device that accelerates
away from the material to be acted upon. As a result it
appears as if the container does not impact on the
material, making the magnetic energy the only force used
in compaction. Thus, the claims are inconsistent with
the specification, and it is not perfectly clear what
caused the compaction. . . . one skilled in the art
clearly would not know how to use the claimed invention.
The specification, it discloses only the wall 108' (the
container wall) “expands radially to compress material
102" (page 15, line 25 ). (Final Rejection at page 2)
We have reviewed the appellant’s specification and note
that in the summary of the invention the specification states
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