Appeal No. 96-3902
Application 08/442,742
enablement of the claims and disclosure. (See brief at pages 6-8.) We agree with
appellants. We find the claims adequately enabled for one of ordinary skill in the art to
make and use the claimed invention from the disclosure, as originally filed. The Examiner
argues at page 7 of the answer that the reference voltage is essential to the operation of
the invention. We agree that the use of the reference voltage is essential to the operation
of the disclosed embodiment for generating the constant voltages, but the lack of this
element’s express recitation in the claims does not therefore make the enablement of the
disclosure lacking as the Examiner asserts. Rather, it is a question of breadth of the
claimed invention which should be addressed by the Examiner’s application of prior art
under 35 U.S.C. §§ 102 and 103. Similarly, we disagree with the Examiner’s discussion
as to the “means plus function” limitation as it relates to the reference voltage. (See
answer at pages 6-8.) Appellants have argued that the “substantially constant” voltages
may be produced by other circuits. (See brief at page 7.) Appellants' invention is directed
to the operation of the supply of power to the mixed signal processing system. The lack of
an express limitation to the reference voltage is
not an enablement problem, but rather it is a question of scope of claim for application of
prior art by the Examiner.
SECOND PARAGRAPH
The Examiner argues that the use of “substantially” in claim 1 does not particularly
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