Appeal No. 2001-2686
Application Re08/932,718
absence of working examples, (4) the nature of the
invention, (5) the state of the prior art, (6) the relative
skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the
claims. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400,
1404 (Fed. Cir. 1988) citing Ex parte Forman, 230 USPQ 546,
547 (Bd.Pat.App. & Int. 1986). Prior art may be relied on
to establish both the level of ordinary skill in the art and
the fact that techniques or structures necessary to practice
the invention were known in the art. Strahilevitz at 1233,
212 USPQ at 564.
In calling into question the enablement of appellant’s
disclosure, the examiner has the initial burden of advancing
appropriate reasoning to support the conclusion that the
disclosure is non-enabling. Strahilevitz at 1232, 212 USPQ
at 563.
Contrary to what the examiner seems to have suggested
on page 4 of the answer, the appealed claims are not limited
to splines only at one end of the connector shaft. Instead,
the claims define a construction having a splined connection
at one end of the connector shaft and any type of connection
at the other end of connector shaft. Thus, in substance,
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007