Appeal No. 94-3823
Application 07/812,249
The examiner rejected claims 1-15, under 35 U.S.C. § 112,
first paragraph, as corresponding to a specification that lacks
an enabling disclosure. In particular, the examiner states:
An integral part of applicant's invention is the
use of probabilities [in figures 2 and 3] to select
a recognized character. How are these probabilities
calculated (especially in regard to the color coded
characters)? This is a necessary part of the
invention, and has not been addressed in the
applicant's specification.
Answer at 4.
Appellants argue that such calculation of probabilities is
conventional and would be known to those with ordinary skill in
the art, as evidenced by Highleyman. Brief at 4. We agree.
The test for enablement under 35 U.S.C. § 112, first
paragraph, is whether one reasonably skilled in the art could
make or use the claimed invention from the disclosed subject
matter together with information in the art without undue
experimentation. United States v. Telectronics, Inc., 857 F.2d
778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert. denied,
490 U.S. 1046 (1989). A disclosure can be enabling even though
some experimentation is necessary. Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir.
1986), cert. denied, 480 U.S. 947 (1987). The issue is whether
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