Appeal No. 2004-1058
Application 09/584,053
Applicants’ recitation [in independent claims 12, 24
and 28] that the grooming tool pulls loose hair from
the pet “without cutting or pulling the non-loose hair
[from the pet]” is not given patentable weight since it
was not disclosed or verified how exactly the non-loose
hair is not cut when the blade engages the pet hair.
It was not disclosed how the grooming is performed
(i.e. how loose hair versus non-loose hair is
distinguished during the pulling). Applicants’ [sic]
have not established that their grooming tool will not
cut non-loose hair [second final rejection, page 4].
Inasmuch as the appellants’ specification contains a rather
detailed and straightforward explanation of the method set forth
in the appealed claims, and more particularly of the grooming
tool blade edge and the role it plays in engaging loose hair and
pulling it from the pet without cutting or pulling non-loose hair
from the pet, the examiner’s enablement concerns presumably stem
from doubts as to whether the blade edge is actually capable of
performing this function. The examiner has not cogently
explained, however, and it is not apparent, why the appellants’
specification lends credence to such doubts. In calling the
enablement of a disclosure into question, an examiner has the
initial burden of advancing acceptable reasoning inconsistent
with enablement. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563-64 (CCPA 1982). Given the absence of such
reasoning and any logical basis therefor in the present case, the
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