Appeal No. 2002-0001
Application No. 08/989,674
of the specification as filed as depicted in Fig. 3. Appellants’
contribution appears to be an improvement over the object model
using the Object Modeling Technique notation as defined by James
Rumbaugh, the discussion of which begins at page 6, line 10 of
the specification as filed.
The examiner’s new theories and bases of the rejection and
expansion of it to include more claims than those set forth in
the final rejection constitute a new ground of rejection.
Nevertheless, all claimed features are recited as part of the
prior art in conjunction with appellants’ contribution in
corresponding terms to the manner of which they have been
disclosed. Therefore, it appears that the scope of enablement is
consistent with the scope of the subject matter recited in all of
the claims on appeal. The examiner’s various assertions and
reasonings advanced in the earlier noted pages of the answer do
not lead us to conclude that the artisan would have necessarily
conducted undue experimentation to make and use the claimed
invention. As such, we conclude that the rejection of claims 5
through 8 (as well as 1 through 4 and 9 through 12) under the
enablement portion of 35 U.S.C. § 112 cannot be sustained.
Turning next to representative independent claim 1 and its
corresponding independent claims 5 and 9 under 35 U.S.C. § 102,
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007