Appeal No. 95-3807
Application 08/088,696
line 20, through page 8, line 6, and page 9, lines 1-32, of the original specification, Appellant
discloses that the ACD routing functions are performed by electronically paging. Because the
originally filed claims are part of the disclosure, we find that the disclosure, as originally filed,
would have conveyed to those skilled in the art that Appellant had possession of the subject
matter later claimed.
The Examiner also objected to the specification under 35 U.S.C. § 112, first paragraph,
for failing to provide an enabling disclosure. Claims 6 through 8 stand rejected under 35 U.S.C.
§ 112, first paragraph, for the reasons set forth in the objection to the specification. On page 3 of
the answer, the Examiner argues that the specification fails to teach how to generate
corresponding paging signals in a predetermined sequence such that one of ordinary skill in the art
would be able to make and use the invention.
In order to comply with the enablement provision of 35 U.S.C. § 112, first paragraph, the
disclosure must adequately describe the claimed invention so that the artisan could practice it
without undue experimentation. In re Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 303
(CCPA 1974); In re Brandstadter, 484 F.2d 1395, 1404, 179 USPQ 286, 293 (CCPA 1973);
and In re Gay, 309 F.2d 769, 774, 135 USPQ 311, 316 (CCPA 1962). If the Examiner had a
reasonable basis for questioning the sufficiency of the disclosure, the burden shifted to the
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