Appeal No. 2001-0672
Application No. 08/856,466
type of cam would have been suitable. Moreover, appellants identify such well known
cam structure by pointing to U.S. Patent No. 4,996,658 [cam 130 (col. 4, line 54)],
which is the same type of cam employed in the McNutt and Riggs references applied by
the examiner in a rejection of the claims under 35 U.S.C. § 103, now withdrawn.
Thus, appellants explicitly point to an available, well-known, cam which may be
used as the cam in the instant claimed invention. Yet, the examiner’s response is not
to argue that the well-known cams described in previous patents are unsuitable for
appellants’ purposes, but, rather, that reference to these patents cannot be used by
appellants because “such was not evident from the original disclosure” [answer-page 5].
Clearly, when faced with a challenge regarding the enablement of a claimed invention,
appellants are entitled to point to evidence, not in the original disclosure, which tends to
show that a claimed element was known and available to artisans at the time of the
invention. That is what appellants have done. We find appellants’ reference to these
documents convincing as to the notoriety of these cams to skilled artisans. The
examiner’s response appears to be more in the form of a response to an argued
rejection under the written description clause of 35 U.S.C. § 112. That is
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