Appeal No. 2003-0614
Application 09/520,591
these structures are and how they operate with the
other claimed structure. That is, are these means or
devices known types of apparatus and if so what are
they and how do they relate to the other claimed
elements. These are but examples of many of the terms
or phrases in the claims that are not clearly defined
in the descriptive portion of the specification as to
what or how these means or devices operate. Further no
flow diagrams have been provided as to how the claimed
computer arrangement functions to perform its recited
claimed functions [final rejection, page 3].
Insofar as the enablement requirement of § 112, ¶ 1, is
concerned, the dispositive issue is whether the appellants’
disclosure, considering the level of ordinary skill in the art as
of the date of the application, would have enabled a person of
such skill to make and use the claimed invention without undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563-64 (CCPA 1982). In calling into question the
enablement of the disclosure, the examiner has the initial burden
of advancing acceptable reasoning inconsistent with enablement.
Id.
In essence, the examiner’s determination that the
appellants’ disclosure is non-enabling rests on the breadth with
which the various means and devices set forth in the appealed
claims are described. The accompanying criticism that the
specification fails to convey how these means or devices relate
to one another has no merit. The description of the means and
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