Appeal No. 2006-0688
Application No. 09/838,425
flow chart of Figure 5 is incorrect, but does not address appellants’ arguments regarding
the examiner’s alleged misunderstanding of step 505 [answer, pages 15-17].
Appellants essentially reiterate that the examiner has mischaracterized the manner in
which the flow chart of Figure 5 operates [reply brief, pages 2-5].
We will not sustain the examiner’s rejection of claims 1-7 as being based on a non-
enabling disclosure for essentially the reasons argued by appellants in the briefs. The
examiner’s position that the flow chart of Figure 5 always ends in the same result is
simply incorrect and demonstrates a lack of understanding of how the invention works.
The examiner apparently fails to appreciate that when cells of the B series overlap with
cells of the A series, then the second operation of step 505 in Figure 5 changes the
previously set true values for those cells to false values. It is this fact that brings about
the various outcomes shown in Figure 5. This manner in which the invention operates
is clear from appellants’ description of the invention and in the working example given
by appellants in the brief. It is not clear to us on this record why the examiner simply
ignored appellants’ evidence that the disclosure satisfied the first paragraph of 35
U.S.C. § 112.
We now consider the rejection of claim 7 under the second paragraph of 35 U.S.C.
§ 112. The examiner states that the computer readable medium of claim 7 was not
defined in the specification, and as such, the scope of the claim is indeterminable
[answer, page 7]. Appellants argue that those of ordinary skill in the art are well aware
of what a computer readable medium is and that the term does need to be defined in
5
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