Appeal No. 2005-0996 Page 3
Application No. 09/848,583
appellants and the examiner. As a consequence of our review, we make the
determinations which follow.
The basis of the examiner’s rejection of claims 1-10, 12 and 13 under 35 U.S.C.
§ 112, first paragraph, as articulated by the examiner on page 3 of the answer, is that it
is unclear how the lifting device 2 uses the vertical, nonharmonic oscillatory motion
described on page 10, in lines 19-24, of the appellants’ specification. The examiner is
concerned because it is uncertain, from the appellants’ underlying disclosure, if the
entire lifting mechanism 2 moves up and down to move the knives 3 toward knives 13 or
if the lifting mechanism pivots to drop the knives 3 down to cut the workpiece.
According to the examiner, “[t]he functional language provided is not supported with any
structure shown in the Figures or any structural language explaining how the lift
mechanism moves knives 3 towards knife 13 to create the cutting action” (answer, page
3).
Insofar as the enablement requirement is concerned, the dispositive issue is
whether the appellants’ disclosure, considering the level of ordinary skill in the art as of
the date of the appellants’ application, would have enabled a person of such skill to
make and use the appellants’ invention without undue experimentation. In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563-64 (CCPA 1982). In calling into
question the enablement of the appellant’s disclosure, the examiner has the initial
burden of advancing acceptable reasoning inconsistent with enablement. Id. To be
enabling under § 112, a patent must contain a description that enables one skilled in the
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