Appeal No. 2002-1019
Application 09/433,570
appellant's disclosure, the examiner has the initial burden of
advancing acceptable reasoning inconsistent with enablement. Id.
In the present case, the examiner has failed to meet the
initial burden of cogently explaining why the appellants’
disclosure of what is relatively simple and straightforward
subject matter would not have enabled a person of ordinary skill
in the art to make and use without undue experimentation the
putting aid/brace member set forth in independent claims 1, 9 and
16, and dependent claims 2 through 8, 10 through 15 and 17
through 24.
In light of the foregoing, we shall not sustain the standing
35 U.S.C. § 112, first paragraph, rejection of claims 1 through
24.
III. The 35 U.S.C. § 112, second paragraph, rejection of claims 1
through 24
The examiner considers independent claims 1, 9 and 16, and
dependent claims 2 through 8, 10 through 15 and 17 through 24, to
be indefinite in that:
a) “[r]egarding claim 1, the phrase ‘substantially planar’
renders the claim(s) indefinite because the claim includes
elements not actually disclosed (those encompassed by
‘substantially’), thereby rendering the scope of the claims
unascertainable” (final rejection, page 4);
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