Appeal No. 1997-3434
Application No. 08/307,075
5). The examiner’s reliance on Donaldson and the discussion
thereof in MPEP § 2181 is in error because the same section of
the MPEP clearly states that:
The Donaldson decision affects only the manner
in which the scope of a “means or step plus
function” limitation in accordance with
35 U.S.C. § 112, sixth paragraph, is interpreted
during examination. Donaldson does not directly
affect the manner in which any other section of
the patent statutes is interpreted or applied . [2]
Thus, we agree with the appellants (Reply Brief, pages 2 and
3) that Donaldson is not pertinent to the facts before us on
appeal.
Turning to the lack of enablement rejection, appellants
argue (Brief, pages 6 and 7) that:
[T]he details of the computing circuitry
are not necessary for an adequate disclosure
or understanding of the invention. The
invention pertains to the provision of the
photodiode detector arrays and not to new
computing circuitry. The calculation of DOI
may in fact be carried out by conventional
computing circuitry as was done in the Gagnon
et al. article. Additionally, the ‘998 patent
(which is properly incorporated by reference
2In In re Dossel, 115 F.3d 942, 946, 42 USPQ2d 1881,
1884 (Fed. Cir. 1997), the Court stated that paragraph
6 of 35 U.S.C. § 112 does not itself implicate the
requirements of paragraph 1 of 35 U.S.C. § 112.
8
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