Appeal No. 2005-0996 Page 4
Application No. 09/848,583
art to make and use the claimed invention. That some experimentation is necessary
does not preclude enablement; the amount of experimentation, however, must not be
unduly extensive. Atlas Powder Co. v. E.I. DuPont de Nemours & Co., 750 F.2d 1569,
224 USPQ 409, 413 (Fed. Cir. 1984).
The examiner is certainly correct that the appellants’ specification and drawings
provide no details as to how the transmission 22, shown merely as a box in Figures 1
and 2 of the appellants’ drawings, converts the rotary motion of pulley 21, driven by
drive motor 1 via a synchronous belt, into “vertical, nonharmonic oscillatory motion of
the knife lifting device 2" as stated on page 10 of the specification. The lack of
disclosure as to this aspect of the invention is somewhat puzzling, in light of the
appellants’ acclaim of the “realization of nonharmonic courses of motion” as making it
“possible to move the knives quickly away from the product after the cut has been
made, thus enabling rapid transport of the product outwardly” (specification, page 8).
Nevertheless, the examiner’s conclusion that, because of the lack of detailed disclosure
of the lifting device and the transmission of rotary motion of the drive motor 1 and pulley
2 to vertical, nonharmonic oscillatory motion of the knife lifting device 2, one of ordinary
skill in the art would not be able to make and/or use the invention recited in claims 1-10,
12 and 13, is lacking in two respects. First, none of the claims before us on appeal
recites a mechanism for moving the knife lifting device 2, presumably corresponding to
the “stroke device for moving knives” as recited in claims 1 and 12, in a vertical,
nonharmonic oscillatory manner. Rather, claims 1 and 12 merely recite a stroke device
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