Appeal No. 96-1349
Application 08/002,168
the invention as set forth in claims 1-3 and 5-9. Accordingly,
we reverse.
We consider first the rejection of claims 1-3 and 5-9
under the first paragraph of 35 U.S.C. § 112. The examiner has
objected to the specification “as failing to adequately teach how
to make and/or use the invention i.e [sic] failing to provide an
enabling disclosure to support claims 1-3 and 5-9" [answer, page
3]. The examiner explains that appellant has not disclosed how
the computer program code can perform the logical bitwise AND
operation to produce a normalized data structure. Finally, the
examiner concludes that it would require undue experimentation
for one of ordinary skill in the art to make and use the
invention.
Appellant makes two major arguments in response to this
rejection. First, appellant argues that the examiner has failed
to satisfy his initial burden of demonstrating why the
specification is not enabling. Second, appellant argues that the
claimed invention is clearly described in the specification in a
manner which would enable others to make and use the claimed
invention as required by Section 112.
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