Appeal No. 2002-2112
Application No. 08/949,534
sufficient reason to doubt the truth or accuracy of Appellant’s
Specification.” We additionally agree with the appellant’s
argument (brief, page 13) that:
Paragraph 9 of the Declaration indicates that one of
ordinary skill in the art would have known of modules to
implement a fax/modem with a DSP, citing a specific DSP
and a specific source for such modules. Paragraph 10 of
the Declaration then indicates that one of ordinary skill
in the art would have known of modules to implement a
sound card with a DSP, again citing a specific DSP and
source for such modules. However, no suggestion is made
in the Declaration that it was known to implement a sound
card with both capabilities, as in Appellants’ [sic,
Appellant’s] claimed subject matter. “Given the
teachings of the specification” and based on all of the
above, the Newman Declaration states that one skilled in
the art would be able to make and use the invention as
claimed without undue experimentation.
In light of the disclosure, the declaration, the prior art of
record that uses DSPs7 and the lack of a definitive and convincing
reason for questioning the enablement of the disclosure, we find
that the burden of coming forward with evidence of enablement never
passed to appellant. For this reason, the lack of enablement
rejection of all of the claims on appeal is reversed.
Turning to the obviousness rejection of all of the claims on
appeal based upon the teachings of O’Connell and Davis, the
examiner indicates (answer, page 7) that O’Connell discloses an I/O
7 See the discussion of Davis (answer, page 8).
7
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