Appeal No. 2006-0524 Παγε 5
Application No. 10/051,577
the truth or accuracy of any statement in a supporting disclosure and to back up
assertions of its own with acceptable evidence or reasoning which is inconsistent with
the contested statement. Otherwise, there would be no need for the applicant to go to
the trouble and expense of supporting his presumptively accurate disclosure." In re
Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
Thus, the dispositive issue is whether the appellant's disclosure, considering the
level of ordinary skill in the art as of the date of the appellant's application, would have
enabled a person of such skill to make and use the appellant's invention without undue
experimentation. The threshold step in resolving this issue as set forth supra is to
determine whether the examiner has met his burden of proof by advancing acceptable
reasoning inconsistent with enablement. This the examiner has not done.
In our view, the examiner has not explained why a person of ordinary skill in the
art would not be able to construct the claimed trimmer, with some experimentation,
having cutting units in a unit frame that substantially absorbs all flow of forces from the
squeezing cut. Such an explanation is necessary because force and vibration
absorption techniques are well known in the art.
The examiner also states that one reading the claims would not know how the
pressing elements adaptors work. Specifically, the examiner states that one of ordinary
skill in the art would not know how the telescoping adaptors are shutter like and
accordion like. We will not sustain this rejection because none of the claims recite
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