Appeal No. 1996-1253
Application 08/113,034
Japanese
Claims 1 to 23 stand rejected under 35 U.S.C. § 112, first paragraph, as lacking an enabling
disclosure.
Claims 1 to 23 stand rejected under 35 U.S.C. § 103. As evidence of obviousness, the
examiner relies upon Orimoto.
Rather than repeat the positions of appellant and the examiner, reference is made to the Brief,
Reply Brief, and the Answer for the respective details thereof.3
OPINION
In reaching our conclusion on the issues raised in this appeal, we have carefully considered
appellant’s specification and claims, the applied patents, and the respective viewpoints of appellant and
the examiner. As a consequence of our review, we are in agreement with appellant (Brief, pages 15 to
19; Reply Brief, pages 7 to 9) that the examiner has not provided a prima facie case of non-enablement
under 35 U.S.C. § 112, first paragraph. With respect to the art rejection, we are in general agreement
with the examiner (Answer, pages 5 to 9) that Orimoto would have fairly suggested the invention of
claims 1 to 5 on appeal. However, we agree with appellant (Brief, pages 25 to 34; Reply Brief, pages
1 to 7 and 10 to 12) that claims 6 to 23 on appeal are neither taught nor suggested by Orimoto. For
the reasons which follow, we will sustain the decision of the examiner rejecting claims 1 to 5 under 35
3We note that the Reply Brief submitted January 22, 1996, was entered and considered by the examiner as
per the letter from the examiner dated February 22, 1999.
3
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