Appeal No. 2004-0131
Application No. 08/462,531
sole with side portions with a greater thickness than the
thickness of a middle portion and a midsole with varying
densities has not been disclosed.” Answer, pages 3-4. The
examiner states that there is no guidance in the specification as
how two totally different embodiments, one of a shoe sole and one
of a shoe midsole, would be combined.
We have already determined that the specification provides
adequate written description support, supra. The examiner, in
his position on the allegedly inadequate written description
support, insufficiently explains how this inadequacy would not
have enabled one of ordinary skill in this art to practice the
claimed invention without undue experimentation. We make this
determination based upon on our position set forth in Section I,
above. In view of this, we determine that the examiner has
failed to meet the required burden.
We therefore reverse the objection to the specification and
rejection of claims 2-4, 6-9, 15-22, and 24-32 under 35 U.S.C.
§ 112, first paragraph (enablement).
III. The 35 U.S.C. § 112, second paragraph, rejection
The examiner bears the initial burden of presenting a prima
facie case of unpatentability, whether the rejection is based on
prior art or any other ground. See In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The requirement
under 35 U.S.C. § 112, second paragraph, is only that the claims
set out and circumscribe a particular area with a reasonable
degree of precision and particularity. In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971). The definiteness of
the language employed in the claims must be analyzed, not in a
vacuum, but always in light of the teachings of the prior art and
the application disclosure as it would be interpreted by one of
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