Appeal No. 1997-2066
Application 08/537,408
Trademark Office must support a rejection for lack of
enablement with reasons. In re Marzocchi, 439 F.2d 220,
223-24, 169 USPQ 367, 369-70 (CCPA 1971).
We conclude that the Examiner has not set forth
persuasive reasons to establish a prima facie case of lack of
enablement for the claimed subject matter. It is clear from
Appellant's specification that the invention is directed to an
improved way of maintaining connectivity using the structure
of a conventional wireless local area network (LAN). Thus,
the nodes, the access points, the cell arrangement, the way of
communicating between access points, etc. in the preamble of
claim 1 are all admitted to be known in the prior art. This
is not a case where the elements were not known to exist in
the prior art. Cf. In re Buchner, 929 F.2d 660,
18 USPQ2d 1331 (Fed. Cir. 1991) (no evidence that phase
comparator having four inputs and one output and divider
having two inputs and one output were known in the prior art).
The Examiner's questions (EA4) about how processing units 71,
75, 79 in figure 6 work and whether they are prior art devices
or new devices, and about how the coordinator 12 functions,
ignore the disclosed conventional nature of those elements.
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