Appeal No. 2002-0431
Application 09/309,057
As these excerpts indicate, the disclosure regarding two
motors discussed throughout the examiner’s argument was not part
of the appellants’ original specification. The “two motor”
disclosure (i.e., describing drive means 76 as an up/down motor
and adding rotary motor 74) and a new figure (3A) which shows the
two motors were added by amendment (filed August 14, 2000,
paper no. 6). The examiner has stated that the added structure
has no basis in the original disclosure (final rejection, page 2;
answer, page 3), and has required that figure 3A and the related
descriptive subject matter be canceled (final rejection, page 2).
The appellants should cancel the alleged new matter or petition
the examiner’s requirement that it be canceled. See Manual of
Patent Examining Procedure § 1002.02(c)(3)(c) (8th ed. August
2001).
Regardless of whether the appellants’ specification is
considered to disclose only drive means 76 or a combination of
up/down drive means 76 and rotary motor 74, the examiner’s mere
assertion that the appellants’ disclosure is not sufficient to
enable one of ordinary skill in the art to make the device for
providing vertical and circumferential motions to the shaft is
not adequate for establishing a prima facie case of
nonenablement. The examiner must back up the assertion with
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