Appeal No. 2005-2731 5
Application No. 10/656,040
that the examiner has not met his burden of advancing acceptable reasoning inconsistent
with enablement. The examiner’s position as set forth in the answer (page 6) is that
[t]he original disclosure did not provide any enabling evidence for the
combination of the docking device being able to actually read/link both the
tape and the hard disk to the host. There is no structure description to allow
one of ordinary skill in the art to ascertain the physical make up of the
integrated docking device. Without such description, one would not be able
to make and use the invention without excessive undue experimentation.
Although it is true that appellant has not provided details as to exactly what the
structure of a docking device having the capability of receiving and communicating with
both a hard disk cartridge and a tape cartridge would look like, we agree with appellant
that one of ordinary skill in the art presented with appellant’s disclosure, particularly the
portions highlighted at pages 6 and 7 of the brief, would have been able to make and use
the docking device schematically shown in Figure 4 of the application drawings and the
overall data storage apparatus of claim 45 without the need for undue experimentation. In
that regard, we note that the examiner has provided no convincing explanation or line of
reasoning as to why making and using a docking device like that set forth in claim 45 on
appeal would have required undue experimentation. See, for example, MPEP § 2164.01
and 2164.01(a) for the factors to be addressed by the examiner in establishing that there is
sufficient evidence to support a determination that a disclosure does not satisfy the
enablement requirement.
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