Appeal No. 2004-0921
Application No. 09/472,134
initial burden of advancing acceptable reasoning inconsistent
with enablement. Id.
According to the examiner (see pages 4, 5 and 9 through 14
in the answer), the appellants’ disclosure is non-enabling
because the close spatial relationship illustrated in Figures 2
and 3 between the handlebars (132) and windshield (124) of the
snowmobile would prevent any significant steering function,
thereby making the claimed invention inoperative. The
appellants, relying on the 37 CFR § 1.132 Declaration of Robert
Handfield filed July 9, 2002 (Paper No. 25) and prior art items
appended to the main brief, submit that Figures 2 and 3 are
merely schematic representations of the snowmobile, and would be
recognized as such by a person of ordinary skill in the art, and
that such a person would have been able to make and use the
snowmobile disclosed and claimed without undue experimentation
notwithstanding the subject portions of Figures 2 and 3.
Considered in light of the appellants’ entire disclosure,
the Handfield declaration and the cited prior art items, the
examiner’s determination of non-enablement is not well founded.
While the depiction of the handlebars and windshield in Figures 2
and 3 arguably is problematic, the evidence as a whole clearly
indicates that it involves a relatively minor drawing glitch
5
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