Appeal No. 1996-1253
Application 08/113,034
single signal example of appellant’s disclosure is explained in enough detail to enable one of ordinary
skill in the art to make and use the recited method in relation to magnetic tapes having plural signals
thereon without undue experimentation.
We find that in this case the examiner has not met his burden of showing a reasonable basis for
questioning the sufficiency of the disclosure. We agree with appellant (Brief, pages 16
to 17) that the examiner has not established a prima facie case of non-enablement and that there should
be no need for appellant to provide numerous examples regarding different tape formats.
Taken in light of the above discussion, we find that appellant’s disclosure adequately teaches
how to make and use the claimed invention, and we will reverse the rejection of claims 1 to 23 under
35 U.S.C. § 112, first paragraph.
Rejection of Claims 1 to 5 Under 35 U.S.C. § 103:
Turning first to the rejection of claims 1 to 5 under § 103, we find that claims 1 to 5 on appeal
would have been obvious to one of ordinary skill in the art at the time the invention was made in light of
the teachings and suggestions of Orimoto. We note that claims 1 to 5 on appeal differ significantly from
claims 6 to 23 on appeal in that claims 1 to 5 broadly call for a method of detecting tape playing and
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