Appeal No. 2001-0688 Application No. 08/689,721 Page 11 user" are required to be carried out in the recited order because of the presence of the term "then" between each of these three steps. Because the claimed method is not limited to the order asserted by the examiner, we find that appellant was in possession of the claimed invention as of the filing date. In addition, because the originally filed specification is enabling for "suspending the strap from the neck of the user," we find the specification to be enabled. From all of the above, we find that the examiner has failed to establish a reasonable basis for questioning the written description and enablement of the claims. Accordingly, the rejection of claims 11 and 12 under 35 U.S.C. § 112, first paragraph, is reversed. REMAND TO THE EXAMINER We observe that no prior art has been applied against the claims since the time that claims 11 and 12 were presented and the other claims in the application were canceled. To the extent that the examiner may have declined to apply prior art against the claims in view of their perceived lack of enablement and perceived inclusion of new matter, we remand the application to the examiner to reconsider all of the prior art in the application.Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007