Appeal No. 2002-1908
Application 09/097,013
The dispositive issue with respect to enablement is whether
the disclosure, considering the level of ordinary skill in the
art as of the date of the application, would have enabled a
person of such skill to make and use the claimed invention
without undue experimentation. In re Strahilevitz, 668 F.2d
1229, 1232, 212 USPQ 561, 563-64 (CCPA 1982). In calling into
question the enablement of the disclosure, the examiner has the
initial burden of advancing acceptable reasoning inconsistent
with enablement. Id.
Claim 4 does not call for the rotary member to be capable of
reverse movement. Contrary to the position taken by the
examiner, the specification (page 16) only states that it is
preferable, not required, that the rotary drum’s intermittent
rotation be accompanied by rotation in the opposite direction.
Be this as it may, however, the examiner has not cogently
explained, nor is it apparent, why the appellants’ disclosure
would not have enabled a person of ordinary skill in the art to
make and use without undue experimentation an aligning apparatus
having the relatively simple and straightforward structure
recited in claim 4, whether or not it is capable of reverse
rotation.
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