Appeal No. 2000-1003
Application No. 08/631,465
The one and only argument concerning this rejection which
might be applicable to claim 33 (or claim 21) constitutes the
appellants’ assertion that “the Shiraishi reference does not
suffice as prior art, because the Shiraishi reference simply is
not enabling as to how to make or use the disclosed device”
(brief, page 19). Notwithstanding our belief that the appellants
have failed to separately group and argue claims 21 and 33, we
will respond to this argument in order to fully assure that the
appellants have received their administrative due process in the
course of this appeal. We consider this argument unpersuasive
for a number of reasons.
First, the appellants have not identified with any
reasonable specificity the particular aspect of Shiraishi’s
device which they regard as not enabled, and our study of this
reference raises no enablement issue from our perspective.
Second, no basis exists for the appellants’ previously mentioned
assertion that “the Shiraishi reference does not suffice as prior
art” (id.) even assuming some unknown aspect of the device
disclosed therein is not enabled. This is because, while a
reference must enable someone to practice the invention in order
to anticipate under section 102, a nonenabling reference may
qualify as prior art for the purpose of determining obviousness
12
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007