Appeal No. 2003-1867
Application No. 09/151,321
OPINION
As the basis of the Section 112 rejection of claims 11-16, 19, and 20, the
examiner objects to “new” limitations contained in present claims 11 and 16. The
limitations are interpreted as reciting a server that “selects an image forming apparatus
based on jobs stored in a memory of the image forming apparatus having the specific
mode of the input job.” However, according to the examiner, page 18 of the
specification relates that “a server 6 just select[s] a printer based on stored jobs in hard
disk 206 of the server, not a memory of the printer, and printer status.”1 (Answer at 3.)
We briefly review the requirements of the statute with respect to providing an
enabling disclosure.
The first paragraph of 35 U.S.C. § 112 requires, inter alia, that the
specification of a patent enable any person skilled in the art to which it
pertains to make and use the claimed invention. Although the statute
does not say so, enablement requires that the specification teach those in
the art to make and use the invention without ‘undue experimentation.’ In
re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
That some experimentation may be required is not fatal; the issue is
whether the amount of experimentation required is ‘undue.’ Id. at 736-37,
8 USPQ2d at 1404.
In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991).
The question is whether the disclosure is sufficient to enable those skilled in the
art to practice the claimed invention; the specification need not disclose what is well
1 It is not apparent to appellant, nor to us, why the examiner did not include claim 1 and its
depending claims in the rejection. Claim 1 recites that the controller selects an image forming apparatus
based, in part, on its storing a prior job having the specific mode of the input job at the time the selection is
made.
-4-
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007