Appeal No. 2001-0672
Application No. 08/856,466
appellants and the examiner.
OPINION
The examiner’s sole reason for rejecting the claims under 35 U.S.C. § 112, first
paragraph, is that cam 30 and cam 32, mentioned at page 2 of the specification, are not
described with sufficient structure as to enable the skilled artisan to make and use the
claimed invention. The examiner agrees that there is sufficient disclosure as to the
function of the cams but the examiner contends that “how” that function is
accomplished, i.e., the structure of the cams, is insufficiently disclosed.
Compliance with the enablement clause of 35 U.S.C. § 112, first paragraph,
requires that the written description must be sufficiently full, clear, concise and exact to
enable the artisan to practice the claimed invention without resort to undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 212 USPQ 561 (CCPA 1982). The
scope of enablement provided by the disclosure must be commensurate with the scope
of protection sought by the claims. Phillips Petroleum Co. v. U.S. Steel Corp., 673
F. Supp. 1278, 6 USPQ2d 1065, 1074 (D. Del 1987), aff’d, 865 F.2d 1247, 9 USPQ2d
1461 (Fed. Cir. 1989).
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