Appeal No. 1998-2707
Application No. 08/586,081
electrical environments and the lower level of predictability expected in chemical reactions
and physiological activity).
Upon weighing the factual considerations before us, we do not agree that the
instant disclosure fails to teach the artisan how to make and use the claimed invention. At
least for the reason that the rejection fails to consider the evidence as a whole, we do not
sustain the rejection of claims 1-16 under 35 U.S.C. § 112, first paragraph.3
Turning to the section 102 rejection of claims 1, 5, 9, and 13 as being anticipated
by Krahe, we agree with appellants that the reference fails to meet all limitations of each of
independent claims 1 and 9. In particular, the rejection (Answer at 7-10) refers to
"production rule data," but does not show that Krahe discloses "production rule data
including data indicating whether production is enabled or disabled," and "generating an
ENABLE/DISABLE control signal by comparing the production rule data with the image
control data, the image template data and the composite control data to generate the
ENABLE/DISABLE control signal," as required by each of independent claims 1 and 9.
3We are, however, somewhat puzzled by statements in the 37 CFR § 1.132 declaration submitted
by appellants' expert on April 24, 1998 in support of enablement. Appellants' expert alleges (¶ 8), with
respect to certain production rules set forth in the specification, "the control data for such production rules
is not described sufficiently completely in the specification for me to render an opinion as to whether a
program could have been written to implement these particular production rules...." The statement at least
raises the question whether the full scope of the claims has been enabled. However, in predictable arts, a
single embodiment may provide broad enablement. See In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24
(CCPA 1970). Here, there are ten production rules (specification at 8-10) that appellants assert to be
enabled, even though four, perhaps, are not. In any event, the examiner's rejection is not based on the
question of whether the claims bear a "reasonable correlation" to the scope of enablement provided by the
specification, nor does the examiner rely on the averment regarding what "is not described sufficiently
completely."
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