Appeal No. 1999-2264
Application No. 08/549,074
(1) For lack of compliance with 35 U.S.C. § 101, “because
the invention as disclosed is non-operative” (examiner’s answer,
page 3);
(2) For failure to comply with the enablement requirement of
35 U.S.C. § 112, first paragraph;1
(3) For failure to comply with 35 U.S.C. § 112, second
paragraph.
Rejection (3)
We will first consider the question of compliance with
§ 112, second paragraph, i.e., definiteness, a requirement which
is distinct from enablement. Process Control Corp. v. HydReclaim
Corp., 190 F.3d 1350, 1358 n.2, 52 USPQ2d 1029, 1034 n.2 (Fed.
Cir. 1999).
The basis of the rejection is stated at page 5 of the answer
as:
The claims as amended are functional in that no
structure for the function of [the piston rod] “configured
to be supplied with oil under pressure to the working
1
1The language used by the examiner in the first paragraph of
section 4 on page 5 of the examiner’s answer relates to the
written description requirement of § 112, first paragraph, but it
is evident from the examiner’s further statements that the basis
of this rejection is non-enablement.
2
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007