Ex parte SMILEY - Page 6




          Appeal No. 96-1898                                                          
          Application No. 07/921,826                                                  


          adds Joseph to this combination in rejecting claim 11.  This                
          would appear reasonable and proper since claim 11 depends from              
          claim 1 the rejection of which relies, at least in part, on                 
          Joseph.                                                                     
               Thus, we will presume, in reaching our decision, that the              
          rejections before us are:                                                   
               1. Rejection of claims 12 through 22 under the first and               
          second paragraphs of 35 U.S.C. 112.                                         
               2. Rejection of claims 1, 3 through 10 and 12 through 22               
          under 35 U.S.C. 103 over Ferrer and Joseph.                                 
               3. Rejection of claim 11 under 35 U.S.C. 103 over Ferrer,              
          Joseph and Blaha.                                                           
               4. Rejection of claim 23 under 35 U.S.C. 103 over Ferrer               
          and Burns.                                                                  
               With these presumptions in mind, we proceed with our                   
          decision.                                                                   
               We turn first to the rejection of claims 12 through 22                 
          under 35 U.S.C. 112, first and second paragraphs.                           
               With regard to the first paragraph of 35 U.S.C. 112, this              
          rejection is based on the enablement clause, the examiner                   
          contending that the claim limitation of “rule information”                  
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