Appeal No. 97-2885
Application 08/384,847
initial burden of advancing acceptable reasoning inconsistent
with enablement. Id. In essence, the examiner contends that
"[t]he disclosure is inadequate in disclosing what specific
computer hardware, circuit components and computer software is
encompassed by the recited system components as disclosed and
claimed so as to enable the
desired press functions relating to registration to be
performed" (answer, page 3). A review of the record, however,
indicates that the appellant has made a fairly detailed
disclosure of the hardware components and associated
operational relationships involved in the claimed method (see,
for example, specification pages 5 through 13 and drawing
Figures 1 through 3). Given the relatively specific and
straightforward nature of this disclosure, it is not evident,
nor has the examiner cogently explained, why the appellant's
specification would not have enabled a person of ordinary
skill in the art to make and use the claimed invention without
undue experimentation.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 112, first paragraph, rejection of claims 1 and 2.
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