Ex parte SCHWARTZ et al. - Page 9




          Appeal No. 1998-0632                                                        
          Application 08/301,812                                                      


          page 16; the comparison discussion at the bottom half of page               
          23 and the summary of the invention at the end of the                       
          specification at page 30.  Additionally, as to this                         
          correlation feature, the latter half of the abstract at page                
          42 of the specification as filed relates to various types of                
          feedback information which are derived as a function of                     
          correlated data during the inspection operations set forth                  
          earlier in the abstract.                                                    
               Thus, it would have been readily appreciated by the                    
          artisan that appellants have presently disclosed in this                    
          application a written description of the action station                     
          claimed, and the claimed correlation and prediction features.               
          Therefore, a11 rejections under the written description                     
          portion of the first paragraph of 35 U.S.C. § 112 as to these               
          features are reversed.                                                      
               As to the enablement issue, the specification of the                   
          patent must teach those skilled in the art how to make and use              
          the claimed invention without undue experimentation.                        
          Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365, 42                
          USPQ2d 1001, 1004 (Fed. Cir.), cert. denied, 118 S. Ct. 397                 


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