Appeal 2007-0052
Application 10/438,053
against it.” Therefore, according to Appellant, Johnsen cannot be considered
enabling for a golf putting device because “to use it in such a manner would
require an undue amount of experimentation” (Appeal Br. 8).
The Examiner asserts that “Johnsen’s device is clearly capable of
performing as a target for a golf ball (a fact not disputed by appellant) and
absent some claimed structural difference it anticipates the claims” (Answer
4). Indeed, Appellant has not specifically disputed that Johnsen’s device is
capable of such use as asserted by the Examiner. Rather, Appellant focuses
on the fact that Johnsen does not actually teach such use. The Examiner
characterizes the difference between Johnsen and Appellant’s claims as one
of intended use only and points out that “[i]f the prior art structure is capable
of performing the intended use, then it meets the claim” (Answer 4).
In light of the contentions by Appellant and the Examiner, the issue
presented for us to decide is whether Appellant has demonstrated that
Johnsen does not provide an enabling disclosure of the subject matter of
Appellant’s claim 1 and, thus, does not anticipate the subject matter of
claim 1. For the reasons that follow, the Examiner has the better argument.
To be prior art under 35 U.S.C. § 102, a reference must put the
anticipating subject matter at issue into the possession of the public through
an enabling disclosure. Chester v. Miller, 906 F.2d 1574, 1576 n.2, 15
USPQ2d 1333, 1336 n.2 (Fed. Cir. 1990). “Such possession is effected if
one of ordinary skill in the art could have combined the publication's
description of the invention with his own knowledge to make the claimed
invention.” In re Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed.
Cir. 1985).
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