Appeal No. 1997-3479
Application 08/495,039
We consider first the rejection of claims 21 and 23-25
under 35 U.S.C. § 112. Although the rejection is nominally
stated to be under both the first and second paragraphs of
Section 112, it appears that the rejection is primarily
directed to a question of enablement. The rejection is simply
stated in two paragraphs on page 4 of the answer. The first
paragraph is nothing more than a bare conclusion that the
claims do not
satisfy the requirements of 35 U.S.C. § 112 with no
explanation of any kind. The second paragraph states
Further, the present invention is
supposed to be a ROM “layout”, with
some special arrangement of select
lines, but the only “layout” figure
that is supposed to represent the
present invention, Figure 4, is
identical to the prior art Figure 2,
and shows no differences. The
isolated “circuit diagrams” simply do
not serve to disclose the present
invention in a manner that can be
understood.
Although these two paragraphs do not establish much of a
rationale for the rejection, it appears to us that the
examiner’s rejection is based upon the enablement requirements
of 35 U.S.C.
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