Appeal No. 2002-1064 Page 5
Application No. 09/126,385
For the reasons set forth above, claim 10 is not a single means claim nor is it
tantamount to a single means claim. In our view, claim 10 complies with the
enablement requirement of 35 U.S.C. § 112, first paragraph.1 Accordingly, the decision
of the examiner to reject claim 10 under 35 U.S.C. § 112, first paragraph, is reversed.
The anticipation rejection
We sustain the rejection of claims 1 to 8 and 10 to 25 under 35 U.S.C. § 102(b).
In the Grouping of claims section of the brief (p. 2), the appellants stated that
"[t]he claims are in three groups: group 1, means claims 1-8 and 10-18; group 2,
method claims 19-25; and group 3, claims 9 and 26. Groups 1 and 2 stand or fall
together." We have selected claim 19 as the representative claim from the appellants'
grouping of groups 1 and 2 together (i.e., claims 1 to 8 and 10 to 25) to decide the
appeal on the rejection under 35 U.S.C. § 102(b).2 Accordingly, claims 1 to 8, 10 to 18
and 20 to 25 will stand or fall with claim 19.
1 The test for enablement is whether one skilled in the art could make and use the claimed
invention from the disclosure coupled with information known in the art without undue experimentation.
See United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert.
denied, 109 S.Ct. 1954 (1989); In re Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
2 See In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Wood, 582
F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978); and 37 CFR § 1.192(c)(7) and (8)(iv).
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