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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