Appeal No. 1998-2841
Application No. 08/463,282
comprises a code which sequentially varies between a time that a key is pressed and a
time that the key is released.5
In light of the evidence before us, the questions posed by the examiner are
misplaced. For example, it matters little, contrary to the implication on page 6 of the
Answer, whether the additional codes are generated by an algorithm, are pre-stored (i.e.,
tabular), or are the product of a random number generator. Using any of the methods
would have been within the immediate understanding of the ordinary artisan. The instant
claims, as the disclosure, are not specific as to how the codes may be encoded and
decoded. However, to practice the full scope of the claimed invention, we find that the
details of implementation would not have required undue experimentation. An applicant
need not, and preferably does not, disclose what is already well known in the art.
In this regard we agree with appellant that the rejection appears to wrongly place
emphasis on what the original specification failed to disclose. Determining what the
specification does not disclose is, at best, merely a first step in determining whether the
claimed invention is enabled. The examiner refers to tools in the prior art (e.g., to “stop
bits” and “headers” at the bottom of page 10 of the Answer) which may, or may not, be
used in implementation of the invention. The inquiry should be directed to whether the lack
5The significance of the language “remedy codes” is not apparent, and even appellant’s counsel
appears to not understand the import of the recitation (Brief, page 10). The rejection does not fault the
language “remedy codes” per se. We do not consider the modifier “remedy” to be fatal to an understanding
of the subject matter, and interpret “remedy codes” as simply meaning codes that are distinct from the
“fixed combination code,” and which are as further defined by the claim recitations.
-8-
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