Appeal No. 96-1729
Application No. 08/165,795
claims also stand rejected under the second paragraph of 35
U.S.C. § 112 as being indefinite. Claims 1 through 11 stand
rejected under 35 U.S.C. § 103. As evidence of obviousness,
the examiner relies upon Roetling in view of Tai (as a newly
stated ground of rejection in the answer) as to claims 1
through 4 and 9 through 11, with the addition of Chen or
Stoffel or Roe as to claims 5 through 8. 2
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs and the answer for
the respective details thereof.
OPINION
We reverse each of the four stated rejections.
Turning first to the rejection of claims 5 through 8
under the enablement provision of the first paragraph of 35
U.S.C.
§ 112, appellant correctly sets the standard of review, that
being a determination as to whether only routine or undue
experimentation must be necessary by an artisan to make and
2At page 14 of the initial examiner’s answer, the
examiner has withdrawn his separate rejection of claim 8 under
the first paragraph written description portion of 35 U.S.C. §
112.
3
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