Ex parte NELSON et al. - Page 10




          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                     
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