Appeal No. 2002-0113
Application 08/799,923
the claimed invention without undue experimentation, in order to
establish a prima facie case under the enablement requirement of
the first paragraph of § 112. In re Wright, 999 F.2d 1557, 1561,
27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Marzocchi, 439 F.2d
220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971).
Upon our review of page 7 of appellants’ specification, we
find that the specification discloses that using numerical
techniques, such as the finite element method (FEM), one can
model the current and voltage distribution in concrete and
thereby predict that geometric arrangement of ground-beds and the
ideal locations for the electrical contacts vis-à-vis the
geometry of the bridge and the rebars. (specification, page 7,
beginning at line 6). The examiner has not explained why this
description of the invention in the specification would not have
enabled one of ordinary skill in this art to practice the claimed
invention without undue experimentation. Hence, the examiner has
not met the required burden. Id.
We therefore reverse the 35 U.S.C. § 112, first paragraph
(enablement) rejection of claims 16-20.
II. The 35 U.S.C. § 112, second paragraph (indefiniteness)
rejection of claims 14 and 16-20
On pages 5 through 6 of the answer, the examiner states that
the phrase “sensing the environment” in claim 14, at line 2, is
vague because it is unclear what is being sensed. The examiner
also states that the phrase “using a numerical technique” in the
last line of claim 16 is indefinite and that the actual operative
steps are not set forth.
On pages 9 through 10 of the brief, appellants submit that
the phrase “means for sensing the environment” is clear from the
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