Appeal No. 2006-2457
Application No. 10/358,831
OPINION
We have carefully considered the subject matter on appeal, the rejection
advanced by the examiner and the evidence relied upon by the examiner as
support for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants' arguments set forth in the
briefs along with the examiner’s rationale in support of the rejection and
arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that appellants’
disclosure fully complies with the enablement requirement under the first
paragraph of 35 U.S.C. § 112. Accordingly, we reverse.
The examiner asserts that the disclosure is non-enabling for several
reasons. First, the examiner contends that the disclosure contains only
“diagrammatric” [sic] drawings of the structures forming the invention that are
“simply schematics” [answer, page 3]. Second, the examiner alleges that the
specification does not disclose specific structures and materials used for (1) the
spring arms, and (2) the ends of the spring members coupling the spring arms to
the base and head suspension [answer, pages 3 and 4].
Appellants argue that the examiner failed to meet the burden of showing
that undue experimentation is required to make or use the claimed invention. In
this regard, appellants contend that the examiner failed to specifically identify
what information was missing from the disclosure and why the skilled artisan
could not supply such information without undue experimentation [brief, page 8].
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