Appeal 2007-1560
Application 10/680,968
I. Claims 1-31 stand rejected under 35 U.S.C. § 112, first
paragraph, as containing subject matter which was not described in
such a way as to enable one skilled in the art to make and/or use the
invention.
The issue presented is: Whether the Examiner has established
that the subject matter of claims number 1-31 meets the enablement
requirements of 35 U.S.C. § 112, first paragraph? We answer this
question in the negative.
The Examiner contends that the Specification does not have
an enabling disclosure for the subject matter of claims number 1-31.
Specifically, the Examiner states, (Answer 3), “[t]he specification as
originally filed, with one skilled in the art to make the claimed
invention because it does not disclose what is meant by activation,
or how activation is achieved.”
The first paragraph of 35 U.S.C. § 112 requires nothing more
than an objective enablement. In re Marzocchi, 439 F.2d 220, 223-
24, 169 USPQ 367, 369-70 (CCPA 1971). How such teaching is set
forth, either by use of illustrative examples or by broad terminology,
is irrelevant. Id. As those skilled in the art will appreciate, the
Specification, pages 5-10, provides lists of suitable materials for
forming the disposable absorbent articles that comprise a liner
composite material. The specification discloses the action of
stretching the article and retracting to original dimensions activates
the liner (Specification, 8). Since Appellants’ Specification contains
a written description of the suitable backing materials and the action
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