Appeal No. 1999-2714
Application No. 08/504,562
With respect to the rejection under 35 USC § 112, first paragraph, we are unclear
of the examiner’s basis for the rejection at page 4 of the answer.3 The examiner states
that the specification is objected to “as failing to adequately teach how to make and/or
use the invention; e.g. failing to provide an enabling disclosure.” We find this to be a
rejection based upon enablement, but we do not find any discussion as to why one
skilled in the art would not be able to make and use the claimed concatenation of the
two representations. From our understanding of the claimed invention, we find no
explanation of why the two codes may not be concatenated together as a single
representation. We find that claims 101-107 teach various steps for carrying out the
concatenation process. We find the recited claims to be enabled on their face and do
not find any analysis by the examiner of what additional disclosure would be necessary
to enable the rejected claims. We reach a similar conclusion with respect to
independent claim 108 and dependent claim 110. We find no discussion of
concatenation in claims 111, 112, 117, or 118 and therefore, do not address these
claims.
35 USC § 112, SECOND PARAGRAPH
3 The examiner lists claims 101-108, 110 and 117-118 in the first line of the rejection, then
concludes listing claims 101-112. We will limit or review to the claims specifically addressed by the
examiner.
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