Appeal 2007-1083
Application 09/847,093
1 Should the Examiner enter a rejection based upon a lack of written
2 description, the Examiner should provide a reasonable basis for establishing
3 that the inventor was not in possession of the invention at the time of filing
4 the application for patent.
5 In the Answer, the Examiner bases the rejection of claims 8-13 under
6 35 U.S.C. § 112 (second paragraph). The Examiner takes the position (Final
7 Rejection 6) that “[c]laims are generally read in light of the specification and
8 in this case, the specification is needed to interpret the claims. The claims
9 are unclear and no examination is possible because the specification is
10 incomprehensible." In the Answer (p. 5), the Examiner gives the example
11 that “language such as ‘a whitening filter with complex coefficients . . , and
12 an array of complex delay-Doppler shift coefficients . . . producing a
13 residual . . .’ require an understanding of the specification to be
14 understandable.”
15 We are not persuaded by the Examiner's assertion because the fact
16 that the language requires an understanding of the Specification, does not
17 explain why an artisan in the Digital Signal Processing field would not
18 understand the terms in the claim, as an artisan could understand the claim
19 language simply from their knowledge of the Digital Signal Processing field.
20 In addition, we note that Appellant submitted a textbook entitled "Digital
21 Signal Processing" (Br. 1) and argues (Br. 2) to the effect that any fair
22 minded engineer would admit that if you understand the contents of the
23 book, you can understand the original application. Appellant goes on in the
24 next two paragraphs of the Brief to point out relevant portions of the book to
25 the Examiner. The Examiner's response (Answer 6-7) is that the original
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Last modified: September 9, 2013