Appeal No. 96-1898
Application No. 07/921,826
renders the claim not only unclear because it suggests that
information is capable of “action,” but that there is no
teaching in the specification as to how to accomplish an
action by the rule information. The second paragraph
rejection is based on similar reasoning, the examiner
contending that it is unclear what is meant by “to act on
classes of objects” because nothing which may be construed as
an action is specified. [principal answer - page 5].
We will sustain the rejection under both the first and
second paragraphs of 35 U.S.C. 112.
In our view, the examiner has raised a reasonable
challenge to the sufficiency of disclosure. The recitation of
“rule information to act on classes of said objects” appears
to indicate that there is some active participation on the
part of the “rule information” which causes classes of objects
to do something yet we find no disclosure instructing artisans
on what must be done or how to do it. In response to the
rejection, appellant points us to page 14, lines 30 et seq. of
the specification. That part of the specification reads as
follows:
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