Appeal 2006-3268
Application 10/479,696
However, we agree with Appellant’s argument that the Figure 1 pneumatic
pressure recording element embodiment satisfies the Examiner’s definition
of “record” or “recording” (Reply Br. 2), such that claim 13 is generic to
either the pneumatic or electrical pressure recording element embodiment.
Moreover, the Examiner has not established that undue
experimentation would be required to make or use Appellant’s invention
recited in claim 20. The extent of the Examiner’s explanation of the
rejection is that claim 13 is limited to Appellant’s Figure 2 embodiment (i.e.,
the electrical pressure recording element embodiment) which does not have
a “pneumatic connection 13” or “additional line” connected to the pneumatic
connection (Answer 3). The Examiner has not addressed any of the factors
delineated in the Wands decision for determining whether Appellant’s
disclosure would require undue experimentation to make or use the claimed
invention. Id.
For the above reasons, we conclude that claim 20 satisifes the
enablement requirement of 35 USC § 112, 1 st ¶. Accordingly, we reverse
the Examiner’s § 112, 1st ¶ rejection of claim 20.
35 U.S.C. § 102(e): REJECTION OVER HOFMANN
CLAIMS 13, 21, AND 26
Device claim 13 recites, in relevant part, “a pressure recording
element recording pressure changes at an output side of the metering device
facing away from the line” and “the means for regulating being adapted to
interact with the pressure recording element, so that the pressure changes
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