Appeal No. 1998-1433
Application No. 08/241,252
sufficient to evidence that appellants have run afoul of the
enablement requirement of 35 U.S.C. § 112, first paragraph. This
is especially true in a mechanical case such as this, involving
predictable arts, where a single disclosed embodiment may provide
a basis for broad claims and the scope of enablement must only
bear a "reasonable correlation" to the scope of the claims. In
re Fischer, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970).
Further in this regard, we note appellants specific disclosure on
pages 2, 3, 24 and 25 relating broadly to assembly of "an
apparatus" and to the statement on page 30 of the specification
that the invention therein can "also be applied to assembling
other apparatus or devices, including other types of injectors."
Thus, we view the examiner's assertion that the disclosure is
enabling only for claims limited to a "fuel injector," to be
incorrect.
As for the examiner's belated attempt in the answer to
establish "undue experimentation," we are in agreement with
appellants' comments and observations in the reply brief (Paper
No. 22, pages 1-4). Although appellants' claims on appeal are
broadly directed to "[a] method of assembling an apparatus having
a plurality of parts" and to an apparatus "of the type including
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