Appeal No. 2000-0331
Application No. 08/822,145
known prior art manual cleaning machine settings, we are of
the opinion that the skilled artisan after reviewing the
disclosure and the acknowledged prior art would know how to
implement the automated control of the coarse cleaning machine
without undue experimentation. Of equal importance, we find
that the scope of the claims is less than or equal to the
scope of the enablement of the disclosure. Stated
differently, the scope of the claims on appeal bears a
reasonable correlation to the scope of enablement provided by
the specification to persons of ordinary skill in the art.
National Recovery Techs. Inc. v. Magnetic Separation Sys.
Inc., 166 F.3d 1190, 1195-96, 49 USPQ2d 1671,
1675-76 (Fed. Cir. 1999). We agree with appellants’ argument
(brief, page 18) that “the Declaration adequately rebuts the
Examiner’s assertions of non-enablement under 35 U.S.C. § 112,
first paragraph, and that the Declarants’ conclusions are
based upon facts and the originally filed disclosure.” Thus,
the rejection of claims 81 through 91 is reversed because
appellants have satisfied the enablement requirement of the
first paragraph of 35 U.S.C. § 112.
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