Appeal No. 2001-0302
Application No. 08/635,614
skill to make and use appellants’ invention without undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563-64 (CCPA 1982). In calling into question the
enablement of appellants’ disclosure, the examiner has the
initial burden of advancing acceptable reasoning inconsistent
with enablement. Id.
The reasoning inconsistent with enablement advanced by the
examiner in the answer involves for the most part an alleged lack
of detail in appellants’ specification of how to determine and
set the diametric deformation of the torque setting member so
that the torque limiter functions in the area of the diametric
force/diametric deformation curve (see Figure 6) set forth in the
last three paragraphs of claim 1. According to the examiner:
The specification does not define values of any
magnitude or within any range for the member 51 . . . .
The specification fails to either recite[] any test
results or procedure for testing or setting any torque
values . . . . It is well known that it is
“difficult”, (e.g.[,] see prior art document X[7], page
6.5, paragraph bridging the left and right columns) to
determine the specific range of values for the
characteristics of linearly elastic materials that form
stress/strain curves such as shown in Fig 6.3 of X and
Fig. 6 of appellants[’] drawings. Fig. 6 and page 24,
7
7Document “X” is the Standard Handbook of Civil Engineers, cited
by the examiner in the final rejection as evidence supporting the
standing rejection under 35 U.S.C. § 112, first paragraph.
9
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