Ex parte MAYER - Page 2




          Appeal No. 1998-2151                                                        
          Application No. 08/580,823                                                  


               Claims 9 and 11 are illustrative of the claimed invention              
          and they are appended to this decision.                                     
               Claims 2 through 11 stand rejected under the first                     
          paragraph of 35 U.S.C. § 112 for lack of enablement.  The                   
          examiner’s rejection (Answer, pages 3 and 4) is as follows:                 
                    There is one and only one approach to extracting                  
               the surface (three-dimensional) distribution of                        
               values as described in the specification: two                          
               (surface) integral equations are setup based on                        
               multimode readings of the cavity Q.  Any                               
               measurements carried out are to be supported by the                    
               only disclosed approach.                                               
               Appellant’s arguments that any non-disclosed feature                   
               is conventional would imply that no specification is                   
               really needed.  The examiner’s position in this                        
               regard is that any claim has to be supported by the                    
               particular approach being disclosed in detail in the                   
               specification, especially when the inventor himself                    
               so states (page 3 in the specification).                               
                    The entire purpose of the measurements is                         
               “solving the first system and the second system to                     
               find the surface resistance and the surface                            
               reactance distribution” (claim 11 step “c”).  The                      
               only reading recited or described is that of the                       
               “unloaded quality factor Qo”.  Note that there are                     
               no details in the disclosure of how to “set up” the                    
               given equations.  There are no details of how to                       
               read the tangential magnetic field (which is needed                    
               for the set up).  There are no details of how to set                   
               up the second equation, which requires non-                            
               dissipative readings (note that Qo does not show                       
               up).  There are no details of how to solve the                         
               particular types of equations described.                               

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