Appeal No. 1998-3416
Application 08/096,538
resolving steps as are provided for in the circuitry of claim 1. Still further, the means
clauses of independent claim 9 also correspond to the circuitry clauses of claim 1 on
appeal. The dependent claims also correspond in a similar manner.
In view of the foregoing, we conclude that the examiner has not provided a
reasonable basis to question the adequacy of the disclosure as it pertains to the particular
subject matter of the claims on appeal. Therefore, the examiner has not made out a prima
facie case of non-enablement according to the first paragraph of 35 U.S.C. § 112.
Although it is clear from our study of the specification and drawings as filed that some
degree of experimentation would have been necessary for an artisan to make and use the
claimed invention based upon the drawings and their associated written description in the
specification as filed, we cannot conclude that an undue
amount of experimentation would have been necessary. Therefore, the decision of the
examiner rejecting claims 1 through 12 under the enablement portion of 35 U.S.C.
§ 112 is reversed.
We reach a similar conclusion with respect to the rejection of claims 1 through 12
under 35 U.S.C. § 103. As to the first clause of claim 1, the examiner generally asserts at
the bottom of page 4 of the answer that Litt does not specifically address and teach a list
of priorities including both planner goals and scheduling goals. At the top of page 5 the
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