Appeal No. 1998-1024 Application 08/511,703 prior art of record (e.g., U.S. Patent 5,036,764 to Rodi) establishes that it was known as of the date of appellants’ application how to compile and store data in a memory representative of the functional relationships between various printing specific variables (e.g., rotational speed of the printing press, operating temperature, ink viscosity, and the type of paper) and the torque of a printing press drive motor for setting register adjustments. Further, U.S. Patent 5,036,764 discloses in column 3, lines 23- 29, that the functional relationships between the printing specific variables and the register adjustment may be determined by at least one trial run of the printing apparatus. Upon further review of the instant application, we note appellants teach that “[s]uch characteristic curves are determined experimentally, for example in test runs of the printing machine”. Based on the state of the art and the relative skill in the art as demonstrated by the ‘764 patent, we conclude that appellants' disclosure would have enabled a person of ordinary skill to make and use appellants’ invention without undue experimentation. Therefore, we will not sustain the rejection of claims 1 through 10 under 35 U.S.C. § 112, first paragraph, as failing to adequately teach how to make and/or use the invention, i.e., failing to provide an enabling disclosure. Now we turn to the rejection of claims 1-10 under 35 U.S.C. § 103 as being unpatentable over Tappert in view of Rodi and Mamberer. As a preliminary matter, we note that despite appellants’ indication on page 13 of the brief that “claims 2-10 do not stand or fall with claim 1," appellants have not separately argued any individual 6Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007