Appeal No. 1998-2263
Application No. 08/692,612
agree with appellant on all issues and reverse the examiner's rejections under 35 U.S.C. §
112, first paragraph, 35 U.S.C. § 101, and 35 U.S.C. §§ 102 and 103.
35 U.S.C. § 112
The examiner maintains that the specification does not adequately teach how to
make and/or use the invention as recited in claim 35. (See answer at page 4). Claim 35
is directed to a computer program on a tangible medium to perform the method recited in
claim 28. The examiner maintains that the specification fails to disclose the program in
some form and therefore, the claim is not supported by the specification. At page 18 of
the answer, the examiner maintains that the skilled artisan would not only have to be skilled
in multiple arts, but that a solution implementing multiple disciplines would require entirely
too much experimentation to implement the claimed invention. We disagree with the
examiner that the solution would require undue experimentation. Appellant argues at
pages 6-8 of the brief that the specification is enabling and that the actual computer
program code is not necessary to enable the claimed invention. We agree with appellant.
At the oral hearing, appellant argued that the examiner's statement of the rejection
under 35 U.S.C. § 112, first paragraph was unclear as to what portion of the first
paragraph the rejection was based upon. Appellant further argued that the examiner
clearly sets forth in the statement of the rejection at page 4 of the answer that the rejection
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