Ex parte BOUREKAS et al. - Page 4




                 Appeal No. 96-3244                                                                                                                     
                 Application No. 08/238,192                                                                                                             


                 provide more details concerning the microprocessor disclosed                                                                           
                 in the specification, and that appellants directly claim a                                                                             
                 microprocessor.  In response to the examiner’s rejections,                                                                             
                 appellants argue (Supplemental Reply Brief (paper number 46),                                                                          
                 page 3) that the examiner is “looking in the wrong place” when                                                                         
                 he looks to appellants’ specification, as opposed to claim 1,                                                                          
                 to determine what is appellants’ invention.  According to                                                                              
                 appellants, claim 1 “clearly recites that the invention is a                                                                           
                 reset circuit in a logic circuit” (Supplemental Reply Brief,                                                                           
                 page 3), and that “to enable making and using Appellants’                                                                              
                 invention, it is not essential to describe the microprocessor”                                                                         
                 (Supplemental Reply Brief, page 4) because “[a]ppellants’                                                                              
                 specification clearly teaches Appellants’ claimed reset                                                                                
                 circuit on pages 5-8 and illustrates specific aspects of such                                                                          
                 a reset circuit in the figures” (Supplemental Reply Brief,                                                                             
                 pages 8 and 9).  We agree.  There is nothing indefinite about                                                                          
                 claim 1, and this claim is fully enabled by the disclosure.                                                                            
                 The same holds true for the other claims  on appeal.  The               3                                                              


                          3In claim 8, the phrase “the step of providing a terminal                                                                     
                 used” is not clear, and in claim 9, the phrase “said disabling                                                                         
                 step” lacks antecedent basis.                                                                                                          
                                                                           4                                                                            





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