Appeal 2007-0694
Reexamination Control 90/006,433
Patent 5,428,933
30 is rejected as lacking enablement. According to the Examiner:
The specification does not enable any person skilled in the art
to which it pertains, or with which it is most nearly connected,
to make the invention commensurate in scope with these
claims. The limitation of “each projection and each recess
comprising opposed walls parallel to the longitudinal direction
and opposed walls perpendicular to the longitudinal direction . .
.” is not supported by the specification. The specification only
shows the projections having the opposed walls, not the
recesses.
(Final Rejection at 2, Answer at 3).
Patentee’s Appeal Brief does not identify this rejection as a ground of
rejection to be reviewed on appeal. (Appeal Br. at 10). Further, the Appeal
Brief contains a section heading “The Section 112 Rejection,” but provides
only a discussion of the Examiner’s rejection of claim 30 as indefinite under
the second paragraph of Section 112. (Appeal Br. at 49-50).
Since we have already determined that claim 30 is unpatentable as
obvious over Guarriello and Horobin ‘969 and/or ‘382, we need not and will
not consider the rejection of claim 30 based on 35 U.S.C. 112, ¶1, lack of
enablement.5 Accordingly, the rejection of claim 30 under 35 U.S.C. 112, ¶1
as lacking enablement is moot.
CONCLUSION
Patentee has failed to demonstrate that the Examiner erred in rejecting
claims 12 and 20 as obvious over the Guarriello and Horobin ‘969.
5 Scaltech, Inc. v. Retec/Tetra, L.L.C., 269 F.3d 1321, 1327 n.2, 60
USPQ2d 1687, 1690 n.2 (Fed. Cir. 2001) (not reaching best mode after
affirming an on-sale bar).
49
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