Appeal No. 2002-0585
Application No. 09/088,307
Reference is made to the briefs and the answer for the
respective positions of appellants and the examiner.
OPINION
Turning first to the rejection under 35 U.S.C. 112, the
examiner contends that the claimed k and kbasis parameters are not
adequately defined in the specification and that one cannot
determine the scope of these terms from the disclosure “beyond
the fact that a PID controller is somehow used” [answer-page 4].
As a matter of Patent Office practice, a specification
disclosure which contains a teaching of the manner and process of
making and using the invention in terms which correspond in scope
to those used in describing and defining the subject matter
sought to be patented must be taken as in compliance with the
enabling requirement of the first paragraph of 35 U.S.C. 112
unless there is reason to doubt the objective truth of the
statements contained therein which must be relied on for enabling
support. Assuming that sufficient reason for such doubt does
exist, a rejection for failure to teach how to make and/or use
will be proper on that basis; such a rejection can be overcome by
suitable proofs indicating that the teaching contained in the
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