Appeal No. 2001-2686
Application Re08/932,718
connections are required at both ends of the connector shaft
to accommodate the orbital motion of the rotor.
The examiner’s citation of the Gentry Gallery, Inc. v.
The Berkline Corp.2 (see page 4 of the answer) is misplaced.
In Gentry Gallery, the court was concerned with the written
description requirement in the first paragraph of § 112, not
the enablement requirement in that paragraph of the
statute.3 The written description requirement and the
enablement requirement in the first paragraph of § 112 are
separate and distinct requirements. See In re Wilder,
736 F.2d 1516, 1519, 222 USPQ 369, 372 (Fed. Cir. 1984).
These statutory requirements involve distinctly different
tests as made evident by Wilder at 1519, 222 USPQ at 372 and
Strahilevitz at 1232, 212 USPQ at 563. Thus, the question
as to whether appellants’ original disclosure describes a
connector shaft with a single splined end (see page 4 of the
answer) is not at issue in the test for meeting the
enablement requirement. Furthermore, the question of
obviousness or nonobviousness as argued by the examiner on
page 7 of the answer is not an issue in applying the test
for enablement.
2 134 F.3d 1473, 45 USPQ2d 1498 (Fed. Cir. 1998).
3 Id. at 1479, 45 USPQ2d at 1503.
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