Appeal No. 2004-2235
Application No. 09/195,005
specified in the earlier decision when considered only in light
of the sparse description thereof in the underlying
specification, the appellant has since submitted evidence,2
unchallenged on its merits by the examiner, to show that a person
of ordinary skill in the art would have understood the structure
and function of these “carrier cages” within the context of the
claimed invention. As for the concerns expressed in the passage
from the earlier decision reproduced above, suffice to say that
such are no longer viable given the content of the current claims
and the new evidence and argument of record.
Furthermore, that the appellant’s specification lacks a
description of any control system to run the insertion drive only
at appropriate times does not mean that the insertion drive runs
continuously. Even if it is assumed for the sake of argument
that such a control system would be necessary for the claimed
2 This evidence consists of selected pages from a Blickle,
Rader + Rollen catalog and a Ketten Wulf catalog submitted as
part of an amendment filed January 9, 2004, which amendment was
entered by the examiner (see the advisory action mailed February
20, 2004). In the answer, the examiner states for the first time
that these materials “have not been properly filed under 37
C.F.R. 1.97 and 1.98 and therefore not considered by the
examiner” (page 5). This belated holding is irrelevant for
purposes of this appeal since the materials were submitted as
evidence of enablement rather than for consideration under §§
1.97 and 1.98. As the amendment which included the materials has
been entered, the materials are properly before us as evidence
bearing on the enablement issue at hand.
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