Appeal No. 1998-1433
Application No. 08/241,252
embodiment" (specification, page 25) of appellants' method is as
applied to a fuel injector (14) and this particular aspect of the
invention occupies the bulk of appellants' disclosure.
Independent claim 1 is representative of the subject matter on
appeal and a copy of that claim may be found in the Appendix to
appellants' brief (Paper No. 20).
No prior art has been relied upon by the examiner to support
the rejection on appeal.
Claims 1 and 3 through 11 stand rejected under 35 U.S.C.
§ 112, first paragraph, "as the disclosure is enabling only for
claims limited to a fuel injector" (final rejection, page 2).
Further discussion by the examiner on page 2 of the final
rejection urges that
The specification does not enable a person skilled in
the art to which it pertains or with which it is most
nearly connected, to make the invention commensurate in
scope with these claims. The only disclosure is to a
method of assembling a fuel injector. The
specification does not provide a disclosure for
assembling any other article and therefore is not
enabling for other methods.
Rather than reiterate the examiner's further commentary
regarding the above-noted § 112 rejection and the conflicting
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