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
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