Appeal No. 2000-0703
Application No. 08/490,268
Thus, the dispositive issue is whether Appellants' disclosure,
considering the level of ordinary skill in the art as of the date
of Appellants' application, would have enabled a person of such
skill to make and use Appellants' invention without undue
experimentation. The threshold step in resolving this issue is to
determine whether the Examiner has met his burden of proof by
advancing acceptable reasoning consistent with the enablement
requirement.
In response to the lack of enablement rejection of claims 1
through 6, 8, 10, 13 through 20 and 24 through 26 (answer at
page 4), appellants argue (brief at page 8) that
[e]ssentially, the Examiner is asking for the exact
firmware or software code in the program memory 46
[Fig.6 of the disclosure] to carry out at least one
embodiment of the claimed inventions . . . . There is
no requirement for enablement that the actual software
code or firmware used to implement an invention be
disclosed.
Appellants have also submitted a declaration under 37 CFR
1.132 by Gary Nobel (paper no. 6), wherein Gary Nobel, one of
ordinary skill in the art, states (pages 1-2),
such engineers are familiar with the printer, hardware,
software, and firmware needed for receiving data in a
well-known format from a computer and converting these
commands into signals which control the firing of the
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007