Appeal No. 2000-0331
Application No. 08/822,145
OPINION
We have carefully considered the entire record before us,
and we will reverse the lack of enablement rejection of claims
81 through 91.
According to the examiner (answer, pages 3 and 4):
[T]here is no description as to how the control unit
operates on the input signals to produce the desired
results so as to enable one of ordinary skill in the
art to practice the claimed invention without undue
experimentation. One of the disclosed desired
outputs, and which is now the focus of the present
claims, is the adjustment of the parameters of the
coarse cleaning machine based on input fiber
characteristics. Also, as presently claimed, the
parameters of the coarse cleaner are adjusted on the
basis of an indication of the identity of the
delivered fiber. This operation is briefly alluded
to at page 34 of the specification. It is submitted
that, not only is there no disclosure as to how the
control unit operates to adjust coarse cleaning
parameters for a single fiber, there is total lack
of disclosure as to how the control unit would
operate to adjust coarse cleaner parameters for a
fiber processing system in which a plurality of
fibers of different origin are delivered to the
system . . . .
We agree with the examiner that the specification 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 (1997). Appellants
4
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