Appeal No. 1998-2496
Application No. 08/714,831
(see answer at page 4), then this position is best addressed with a prior art rejection rather
than by questioning enablement. Therefore, we cannot sustain the rejection of claim 15-43
under 35 U.S.C. § 112, first paragraph for lack of enablement.
With respect to the rejection of claims 35-37, 39, 40 and 42 under 35 U.S.C.
§ 112, first and second paragraphs for lack of enablement or in the alternative, for failing
to particularly point out and distinctly claim the subject matter appellants regard
as their invention because appellants have not specified the location of the bumps on the
disk, again, the examiner does not provide evidence or a convincing line of reasoning for
the rejections. While the specification discloses the bumps generally at the location of the
CSS, the specification does not limit the bumps to this location. In our view, skilled
artisans would have realized that for a readable medium, the bumps would be detrimental
to the operation of the disk and reader if they were in the storage area. Again, this is a
question of the breadth of the claims which is best addressed with a prior art rejection
rather than questioning the sufficiency of the disclosure or the particularity of the claim
language. In our view, the invention, as claimed, is supported
by an enabling disclosure and the claims clearly set forth the invention. Therefore, we
cannot sustain the rejection of claim 35-37, 39, 40 and 42 under a lack of enablement or in
the alternative, as lacking particularity.
CONCLUSION
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