Appeal No. 97-3918
Application 08/447,901
reviewable by petition rather than appeal, citing MPEP
§ 608.04(c) (Answer at 3). We would agree if the examiner had
not also rejected the claims under the first paragraph of §
112 on the same ground. Although the stated ground of
rejection is nonenablement, the reasoning given in support of
the rejection suggests that the problem is a lack of written
description support (final Office action at 3): 7
The specification is objected to under 35 U.S.C. §
112, first paragraph, as failing to teach how to make
and/or use the invention.
The disclosure does not enable independent claim 2.
It never mentions means for selectively adjusting the
gain relative to the initiation of recording and
reproducing modes. It never defines predetermined times
for changing the gain of the transconductance amplifier.
Because the written description issue raised by the objection
is the same as that raised by the rejection, it is appropriate
under MPEP § 608.04(c) for us to consider the merits of both
the objection and the rejection in this appeal.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed, including the original
drawings, would reasonably have conveyed to the artisan that
7Paper No. 15.
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