Appeal 2006-3401
Application 10/938,255
practicing this claimed method without a housing. In contrast, the appealed
claims define a generic method which may or may not include use of a
housing.
Under these circumstances, the pivotal issue of this appeal is whether
the Appellants' disclosure of a single embodiment which includes use of a
housing would enable a person with ordinary skill in this art to practice,
without undue experimentation, a snoring treatment method which does not
include use of a housing as encompassed by the generic claims before us.
There is reasonable doubt that Appellants' disclosure provides
enablement for a method which does not include use of a housing. As
described in the Specification (and defined by allowed claim 3), a housing
(or bladder) defines an interior space within which the polymer and
stiffening agent are injected and allowed to freely commingle so as to react
with one another to thereby achieve the desired alteration of flexibility. In
contrast, without a housing and its interior space, the polymer and stiffening
agent are not free to commingle and react with one another. As correctly
indicated by the Examiner, interstitial matter such as fluids in the palate
might well prevent the polymer and stiffening agent from commingling and
reacting with one another and thereby prevent achievement of the desired
flexibility alteration (Answer 5-6).
These considerations persuade us that the Examiner's enablement
doubts are based on reasonable technical rationale. Only by undue
experimentation would an artisan be able to determine whether it is possible
to practice the claimed snoring treatment method without a housing and, if
possible, the conditions and parameters which would enable practice of such
a method. Because the generic claims on appeal encompass this method,
4
Page: Previous 1 2 3 4 5 Next
Last modified: September 9, 2013