Appeal No. 1997-2678
Application No. 08/347,270
the rejection only on the written description section of 35
U.S.C.
§ 112 because the examiner alleges that the specification, as
originally filed, “does not provide support for the invention
as is now claimed ” [answer-page 3]. But, later on, at page 4
of the answer, the examiner complains about an “inadequate”
disclosure and a failure “to provide an enabling disclosure”
because the IBM Dictionary material has not been inserted into
the specification.
In any event, whether the rejection is based on only the
written description portion of 35 U.S.C. § 112 or on both the
written description and enablement portions of 35 U.S.C. §
112, we will not sustain the rejection of the claims under 35
U.S.C.
§ 112.
The examiner points to much of the language of the claims
(e.g., “operational,” “controlling,” “fetching,” “means for
outputting,” etc. and contends that these added features of
the claims are not supported by the original disclosure since
the examiner is “unable to find correlation between the new
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