Appeal No. 1998-2263
Application No. 08/692,612
is based upon a lack of enablement and again in the discussion section at page 18 of the
answer, but the accompanying discussion at page 4 of the answer is directed to a lack of a
written description in the specification of computer program code in some form. From the
examiner's varied treatment of the claim, it is unclear as to the appropriate basis of the
rejection under enablement or written description. (See generally In re Barker, 559 F.2d
588, 593, 194 USPQ 470, 474 (CCPA 1977), enablement and written description are
separate basis for a rejection and one basis does not necessarily support a rejection
under the other basis.) We agree with appellant that the basis of this rejection is unclear.
We will assume the rejection is based on lack of enablement.
With respect to enablement, appellant cites to page 16 of the examiner's answer
where the examiner states, with respect to a rejection under 35 U.S.C. § 103, that "there
are numerous computer programs which solve the simultaneous equations used in linear
programming, such as LINDO, which would be well known in the art and would inherently
be used by an individual who wanted to solve simultaneous equations." The examiner
continues in a subsequent rejection under 35 U.S.C. § 103 to state that "the particular
equations and defined conditions used would depend on the situation, but one skilled in
operations research would inherently be able to write such equations and conditions
through linear programming and then solve [them] based on the defined conditions." Id.
We agree with the examiner that the skilled artisan would have had that ability as argued
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