Appeal No. 1998-1537
Application No. 08/134,916
teach how to make hollow lugs, such as the bottom bracket lug
(h) (brief, pages 21 to 23).
It is well settled that:
References relied upon to support a rejection
under 35 USC 103 must provide an enabling disclosure,
i.e., they must place the claimed invention in the
possession of the public. [Citation omitted]. An
invention is not "possessed" absent some known or
obvious way to make it.
In re Payne, 606 F.2d 303, 314, 203 USPQ 245, 255 (CCPA 1979).
See also Beckman Instruments, Inc. v. LKB Produckter AB, 892
F.2d 1547, 1551, 13 USPQ2d 1301, 1304 (Fed. Cir. 1989) ("In
order to render a claimed apparatus or method obvious, the
prior art must enable one skilled in the art to make and use
the apparatus or method"). In the present case, Tseng does
not disclose how to make the disclosed hollow lugs 1, 4, 6 out
of composite materials, and we do not consider that Kyokai
would have enabled one of ordinary skill to do so without
undue experimentation. In particular, it is not apparent how
Kyokai's disclosed method of making the back claw, using metal
cores for the two cylindrical portions each of which is
attached to a flat body, would be applicable to making hollow
lugs of the type disclosed by Tseng, which consist of a
10
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