Appeal No. 2004-0837
Application No. 09/778,481
specification reasonably convey] ... that the inspection device
is ‘spaced from the sheave.’”
It follows that the examiner’s written description rejection
cannot stand, for it fails to consider both the drawings and the
written description in the application as originally filed.
Accordingly, we reverse the examiner’s Section 112, first
paragraph, rejection of claims 1 through 19 as lacking written
descriptive support in the application disclosure as originally
filed for the presently claimed subject matter.
ENABLEMENT:
The examiner has rejected claims 1 through 22 under 35
U.S.C. § 112, first paragraph, ”as containing subject matter
which was not described in such a way as to enable one skilled in
the art to which it pertains, or with which it is most nearly
connected, to make and/or use the invention.” According to the
examiner (the Answer, page 4):
The instant specification pages 6-10, merely gives
examples of placement schemes for the inspection device
and clearly states on page 6, lines 7-11 and page 10,
lines 3-9, that the particular location for the
inspection device is subject to interpretation and that
“those skilled in the art will be able to take into
account the various factors that indicate ideal
placement of an inspection device in a particular
situation.” It cannot be seen how this would comprise
a structural limitation or method step.
The enablement test is whether the disclosure, as filed,
together with information known in the art, enables one of
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