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.
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