Appeal No. 2002-1019
Application 09/433,570
seemingly is directly connected with the merits of the 35 U.S.C.
§ 112, first paragraph, rejection on appeal. Thus, to the extent
that this objection is inconsistent with our treatment of the
rejection, it should be withdrawn.
II. The 35 U.S.C. § 112, first paragraph, rejection of claims 1
through 24
This rejection rests on the examiner’s determination that
the appellants’ specification fails to comply with both the
written description and enablement requirements of § 112, ¶ 1.1
In the examiner’s view, the specification lacks written
descriptive support for the subject matter now recited in the
appealed claims because “[i]n Claim 1 the added recitation ‘in
the case . . . handed golfer’, in Claim 9 the added recitation
‘under the left . . . handed golfer’, and in Claim 16 the added
recitation ‘said armpit . . . putting stance’ and ‘planar’ is new
matter” (final rejection, page 3). In the same vein, the
examiner considers the specification to be non-enabling with
respect to the claimed subject matter since “[t]he new matter
added to the claims, as recited above, is not shown in the
drawings and gives no guidance to one of ordinary skill in the
1 The written description and enablement requirements are
separate and distinct. Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
5
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