Appeal No. 1999-1581
Application No. 08/651,369
examiner is of the opinion that the lowest non-word score
should be compared with the highest word score. From the
disclosure (specification, pages 6 and 7), it is apparent that
appellants compare a non-word score with an associated word
score, regardless of its size. Even if the examiner’s ratio
calculation would yield a better speech recognition system
than the one disclosed and claimed by appellants, the examiner
still has the burden of demonstrating that appellants’ chosen
method of calculating a ratio between an associated word score
and a non-word score will not result in a workable speech
recognition system. In the absence of such a showing, the
burden never shifted to appellants to prove that the
specification is indeed enabling, and we must, therefore,
accept the appellants’ argument (brief, pages 5 and 6; reply
brief, pages 1 through 4) that the disclosed and claimed
invention is described in sufficient detail to satisfy the
enablement requirement of the first paragraph of 35 U.S.C. §
112. In re Wright, 999 F.2d 1557, 1561, 27 USPQ 1510, 1513
(Fed. Cir. 1993). Thus, the rejection of claims 1 through 3,
5 through 11 and 13 through 16 under the first paragraph of 35
U.S.C. § 112 is reversed.
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