Ex parte WILLIAMS et al. - Page 13




          Appeall No. 1998-1398                                     Page 13           
          Application No. 08/400,637                                                  


               Here, the original specification discloses "a call in                  
          process between the PCC 101 ... and a calling party ...."                   
          (Spec. at 16.)  One of ordinary skill in the art would know                 
          that the calling party necessarily used a telephone having a                
          telephone number to place the call in process.                              


               In view of this disclosure and knowledge, we are not                   
          persuaded that persons skilled in the art would not recognize               
          in the disclosure a description of the claimed limitations of               
          “a telephone device having a telephone number ....”                         
          Therefore, we reverse the rejection of claims 27-36 as lacking              
          a written description.  We proceed to the enablement                        
          rejection.                                                                  


                      II. Enablement Rejection of Claims 27-30                        
               We begin by noting the following principles.  To fulfill               
          the enablement requirement, a specification must contain a                  
          description that enables one skilled in the art to make and                 
          use the claimed invention.  That some experimentation is                    
          necessary does not preclude enablement.  All that is required               









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