Appeal Number: 2006-1694
Application Number: 10/131,607
Rejection under 35 U.S.C. § 112
A specification complies with the 35 U.S.C. § 112, first paragraph,
enablement requirement if it allows those of ordinary skill in the art to make and
use the claimed invention without undue experimentation. See In re Wright, 999
F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
Claim 3
The examiner argues that claim 3 requires straightening to eliminate
downstream crossbow caused by the processing device, and that the appellants do
not disclose that the straightening device eliminates crossbow both upstream and
downstream of the processing device (answer, page 6). Claim 3 does not require
elimination of crossbow caused by the processing device. What the claim requires
is that “crossbow is eliminated downstream from said strip processing device
having a negative effect on strip planarity.” As pointed out by the appellants
(brief, page 6), the requirement of claim 3 is met if crossbow is eliminated
upstream of the strip processing device and no crossbow is caused by the strip
processing device. The examiner has not explained why the appellants’
specification would have failed to enable one of ordinary skill in the art, without
undue experimentation, to eliminate upstream of the strip processing device such
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