Appeal No. 2005-0973
Application No. 09/740,669
BARRY, Administrative Patent Judge, concurring.
I concur in the results reached by my colleagues. Regarding
the reversal of the enablement rejection, however, I reach the
result via a different path. In addressing the enablement
rejection, the Board conducts a two-step analysis. First, we
construe the claims at issue to determine their scope. Second, we
determine whether the construed claims would have been enabled.
I. CLAIM CONSTRUCTION
“Analysis begins with a key legal question — what is the
invention claimed?” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d
1561, 1567, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987). Here, claims 5
and 14 list fields constituting an entry in a shift structure. In
particular, the claims recite “an in-flight field.”
II. ENABLEMENT DETERMINATION
Having determined what subject matter is being claimed, the
next inquiry is whether the subject matter would have been enabled.
“[T]he PTO bears an initial burden of setting forth a reasonable
explanation . . . why it believes that the scope of protection
provided by that claim is not adequately enabled by the description
of the invention provided in the specification of the application.
. . .” In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007