Appeal No. 2001-0688
Application No. 08/689,721 Page 7
shown in the originally filed application, one skilled in the art
(admittedly not a high level of skill) could come up with all of
the possible ways to maneuver the parts, thereby meeting the
claimed steps." However, the examiner asserts (id.) that the
disclosure is nonenabling because "finding all of the possible
permutations of the steps is seen to be undue experimentation."
In addition, the examiner acknowledges (answer, page 6) that the
originally filed specification is enabling for pulling the
recorder apart and then placing the ring thereon, but asserts
(id.) that the specification as originally filed does not
reasonably provide enablement for performing this operation after
the strap has been placed on the neck of the user.
The examiner further asserts (id.) that "claimed limitations
cannot be implied. The claimed subject matter must be present in
the specification."
Thus, the basis of the examiner' rejection is that although
the step, itself, of "suspending the strap from the neck of the
user" has support in the originally filed disclosure, the order
of the step as recited in method claims 11 and 12 is not
supported in the originally filed disclosure, and that the order
of the step is not enabled, as undue experimentation would be
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