Ex parte DILLEN et al. - Page 4



              Appeal No. 1998-2904                                                                                        
              Application 08/715,256                                                                                      


              selectively group the individual gate electrodes 22 into respective groups 23 in Figure 2 and               
              as shown in Figures 3a through 3c.  The specification as a whole makes clear to the artisan                 
              that each individual gate electrode 22 must inherently be selectively addressable by the gate               
              circuit 28 to achieve the individual, selective grouping function itself.  Although this is not shown       
              directly in the figures associated with the written specification, it is clearly indicated to the           
              artisan in the written specification itself.  Thus, we are in agreement with the view expressed by          
              appellants at page 5 of the principal brief on appeal that “the person of ordinary skill in the art         
              would understand each drawn line 29 to schematically represent parallel electrical contact lines            
              or equivalent arrangements, such as well known addressing means, enabling the voltages on                   
              the gate electrodes of a row to be imposed independently of each other.”  The books and                     
              publications noted and discussed at pages 5 through 7 of the principal brief on appeal support              
              this conclusion.  In view of the foregoing and in view of our conclusion that a reasonable degree           
              but not an undue amount of experimentation would have been required of the artisan to make                  
              and use the claimed invention, we must therefore reverse the rejection of claims 1 through 18               
              under the enablement provision of                                                                           
              35 U.S.C. § 112.                                                                                            
                     The examiner has not separately set forth any line of reasoning as to the assertion that             
              the best mode has not been set forth within the first paragraph of 35 U.S.C. § 112.  The                    
              examiner's line of reasoning does not assert that the inventors knew of a better mode of                    
              carrying out the claimed invention than they disclosed in the specification and that the                    



                                                              4                                                           




Page:  Previous  1  2  3  4  5  6  7  Next 

Last modified: November 3, 2007