Ex parte OHNO - Page 7





                  Appeal No. 95-0868                                                                                                                      
                  Application 07/987,552                                                                                                                  


                       Figure 2 shows that receivers 10  and 10  having threshold levels V  and V , respectively,2        3                               2        3                                       
              accurately detect the digital data.  This is described in the specification at the paragraph bridging pages 5-6.                            

              However, the specification does not describe any circuitry or programming that would permit one skilled                                     

              in the art to detect which receivers are accurately detecting the data.  To the best of our knowledge, and                                  

              from a review of the prior art cited in the record, an element to accurately detect data from multiple                                      

              receivers each with a different threshold level is not conventional in the art.  Since the element to accurately                            

              detect data is integral to the practice of the invention and neither the application nor the prior art describe                             

              its structure, we have reason to doubt that the claimed invention could be carried out based on the                                         

              disclosure.  See Id.  It is not enough that a person skilled in the art, by carrying on investigations along the                            

              line indicated in the subject application, and by a great amount of work eventually might find out how to                                   

              make and use the instant invention.  The statute requires the application itself to inform, not to direct others                            

              to find out for themselves.  Cf. In re Gardner, 427 F.2d 786, 789, 166 USPQ 138, 141 (CCPA 1970)                                            

              ("the law requires that the disclosure in the application shall inform [those skilled in the art] how to use, not                           

              how to find out how to use for themselves").                                                                                                











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