Ex parte ERSKINE et al. - Page 6




          Appeal No. 96-0550                                                          
          Application 07/960,148                                                      

          In our opinion, the specification clearly discloses how to make             
          and use the invention as required by 35 U.S.C.  112, first                 
          paragraph.  In fact the examiner does not state that a person of            
          ordinary skill in the art would not be taught how to make and use           
          gray scale to reduce the perception of a double image.  Rather,             
          the examiner states that the specification does not disclose how            
          gray scale is used to reduce the perception of a double image.              
          As such, the examiner's rejection is directed to the lack of                
          disclosure of the theory of the invention.                                  
          However, the inclusion of a theory of how the invention works is            
          not necessary to meet the enablement requirement of 35 U.S.C.              
          112, first paragraph.  See, Fromson v. Advance Offset Plate,                
          Inc., 720 F.2d 1565, 1570, 219 USPQ 1137, 1140 (Fed. Cir. 1983).            
                    As the examiner has not advanced reasons why a person             
          skilled in the art would not be taught how to make or use the               
          invention, the examiner has failed to establish a prima facie               
          case of enablement.  See Strahilevitz, 668 F2d at 1232, 212 USPQ            
          at 563.  In view of the foregoing we will not sustain the                   
          rejection of claims 10, 29 and 33 under 35 U.S.C.  112, first              
          paragraph.                                                                  
                    Turning now to the rejection of claims 10, 29 and 33 as           
          unpatentable under 35 U.S.C.  103, we find that Ott discloses an           


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