Appeal No. 96-1349
Application 08/002,168
not "experimentation." In re Wands, 858 F.2d 731, 736-37, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988). When the rules of law just
noted are applied to the facts of this application, it is clear
that the examiner has failed to satisfy the burden of providing a
reasonable basis for questioning the sufficiency of the
disclosure, and that the position of the examiner is
substantively incorrect in any case.
The invention which must be disclosed within the meaning
of 35 U.S.C. § 112 is the invention as set forth in the claims.
When claim 1 (quoted above) is considered, it can be seen that
the following three steps are performed: 1) receiving a data
structure, 2) ANDing the received data structure bitwise with a
specific template structure, and 3) replacing the received data
structure with the result of the ANDing step. We are at a loss
to understand why the examiner finds this invention not to be
enabled by the present specification. These three steps could
hardly be more routine for the person skilled in the data
processing arts. The application figures and corresponding
description describe precisely how the process is performed. The
examiner’s rejection is based on nothing more than a bare
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