Appeal No. 96-0992
Application 08/293,936
In so holding, the merits panel stated that
our difficulty with appellants’ position is not
focused upon the mathematics involved [in deriving
the transformation matrix] but rather with the basic
question of the disclosure’s failure to inform one
of ordinary skill in the art about the underlying
physical relationship between the colorimetric and
densitometric data necessary in order to practice
the invention. [Prior decision, page 10.]
In an effort to overcome the examiner’s prima facie case
of lack of enablement, appellants elected to continue
prosecution for the purpose of presenting new evidence to
support their position that the disclosure as originally filed
is sufficient to enable one skilled in the art to achieve the
colorimetry data to density data conversion of the invention.
Appellants contend that the newly submitted declaration of
Tino Celio and its supporting documentation overcomes the
examiner’s prima facie case because the newly submitted
evidence
set[s] forth factual information which unequivocally
establishes the level of skill in the art before
Appellants’ priority date[,] . . . further includes
factual information regarding the amount of time and
respect to the converting step. See pages 5 and 6 of the
prior decision.
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