Appeal No. 2001-0644
Application No. 09/250,204
After review of the claims under appeal and the underlying
specification supporting said claims, we find ourselves in
agreement with appellants’ position in this matter.
Specifically, we are in full agreement with appellants’ position
that one skilled in the art, after reading appellants’
specification including the Test procedure found therein at page
17, line 16, through page 18, line 11, would be able to reproduce
appellants’ WVTR Test procedure in order to test the backsheet of
an absorbent product already within the possession of the skilled
artisan to determine whether that product potentially infringes
the claims. In this regard, the composition and construction of
the “samples” referenced on page 17, lines 19, 20, and elsewhere
in the explanation of the Test procedure do not need to be known
in order to successfully conduct appellants’ Test procedure to
determine the WVTR of a particular sample.1 The examiner’s focus
on the circumstance that the specification does not set forth any
details of the “samples” being tested is simply misplaced.2
1By analogy, it is not necessary to know the composition and
construction of a given “sample” in order to use a scale to determine
its weight.
2At several places in the answer the examiner makes statements
that would appear to indicate doubt on the examiner’s part as to
whether appellants’ disclosure complies with the enablement
requirement found in the first paragraph of 35 U.S.C. § 112. See, for
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