Appeal No. 2002-0377 Page 4
Application No. 09/123,908
The rejection under 35 U.S.C. § 112
We will not sustain the rejection of claims 1 to 25 under 35 U.S.C. § 112.
The basis for the examiner's rejection of claims 1 to 25 under 35 U.S.C. § 112 is
set forth on page 3 of the final rejection2 as follows:
All claims are based on an inadequate disclosure as to structurally how the
system is designed to have and use the internal list of claims 1, 18 and their
dependents. It is also inadequately disclosed in all of the claims as to how the
system is structurally designed to perform the decentralized control of the
conveying devices, the branching devices and how the information on the
information medium is functionally and structurally used by the decentralized
control system to enable conveyance of items to distant work stations. The
claims are also based on an inadequate disclosure as to structurally how one
branching device is selected based on the activities of the neighboring branching
devices. Struturally how do you determine what activities are occuring [sic,
occurring]. The disclosure of structurally how the functions of claims 3, 6, 7, 12,
13, 16, 17 and 21-25 are achieved is further inadequate. With regard to claim 6,
if only unreachable destinations are in the internal list, the branching device can
not feed to a destination and the system would be inoperative. With regard to
claim 20, if the second address is not used until after processing at the first
address, why record it early?
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
2 The rejection of claims 13 and 14 as being indefinite set forth in the last sentence of this
rejection was withdrawn by the examiner on page 4 of the response to remand.
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