Appeal 2007-0255
Application 10/331,878
or with which it is most nearly connected, to make
and/or use the invention.
The added limitation of "sliding directly on
each other" is not supported in the specification. In
the specification page 5 lines 8-10, applicant
discloses plastic sheets between the boards. The
specification does not disclose the boards directly
sliding on each other. Applicant points to the
drawings for support, however, the drawings of
figures 1-3 show the boards(2) being spaced from
each other, presumably by plastic sheets.
Normally, if there were no plastic sheets between
the boards, the boards would be shown touching
each other. The drawings do not show the boards
touching each other.
(Answer 3.)
While the Examiner's statement of the rejection is based on failure to
comply with the enablement requirement, the Examiner's explanation of the
rejection appears to question written description support. In either case, for
the reasons that follow, the rejection cannot be sustained.
Insofar as the enablement requirement is concerned, the dispositive
issue is whether Appellant's disclosure, considering the level of ordinary
skill in the art as of the date of Appellant's application, would have enabled a
person of such skill to make and use Appellant's invention without undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561,
563-64 (CCPA 1982). In calling into question the enablement of Appellant's
disclosure, the Examiner has the initial burden of advancing acceptable
reasoning as to why Appellant's Specification does not satisfy the
enablement requirement. Id. See also In re Marzocchi, 439 F.2d 220, 169
USPQ 367 (CCPA 1971).
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