Appeal No. 96-1349
Application 08/002,168
opinion, and it cannot be substantiated by any factual assertions
proposed by the examiner. Therefore, the examiner has failed to
provide a reasonable basis for questioning the sufficiency of the
disclosure.
Notwithstanding the fact that the examiner has presented
no reasonable basis for questioning the sufficiency of the
disclosure, we are unable to understand why the examiner has
ignored the fact that appellant submitted a computer program
which would carry out the claimed invention as an appendix to the
specification. Thus, even if the examiner had reasonably
questioned the enablement of the disclosure, he has presented no
reasons why the implementing computer program originally
disclosed by appellant would not be sufficient to satisfy the
enablement provision of 35 U.S.C. § 112.
It has not been particularly helpful to us that in
response to specific contentions raised by appellant the examiner
has simply repeated verbatim the same statements made in
rejecting the claims in the first place. The response to
arguments section of the examiner’s answer should be just that --
a response to specific arguments made by appellant and not simply
a repetition of the rejection.
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