Appeal No. 2006-0809 Page 7
Application No. 10/887,631
is moved to be close to the right hand side edge of the
print media, thus accommodating different print media
widths. The movable sensor can be a sensor mounted on
a carriage which moves along a carriage transport rail
aligned to the sensor axis. Such carriages are well known
in the art and are used in printers, such as the printer of
Fig. 2.
Accordingly, we find that the examiner has not met his initial burden of
setting forth a reasonable explanation as to why he believes that the scope of
protection provided by the claims is not adequately enabled by the description of
the invention provided in the specification of the application. Thus, we reverse the
examiner’s rejection of claims 25-31 under 35 U.S.C. § 112, first paragraph, for
lack of enablement.1
In their brief, the appellants also address the new matter objections to the
amendments to the specification and Figure 2 of the drawings. As the examiner
correctly noted in his answer, these issues are subject to review by petition under
37 C.F.R. § 1.181 and we decline to review them here.2
1 With regard to claim 31, we note that the phrase “said first optical sensors” lacks antecedent
basis. If appellants pursue further prosecution of this application, they should consider clarifying
the scope of this claim.
2 We note that the Examiner did not reject the claims for lack of written description under 35
U.S.C. § 112, first paragraph. As such, it appears that the appellants should be able to present a
figure, similar to Figure 3, depicting a “movable sensor mounted on a carriage which moves
along a carriage transport rail aligned to the sensor axis,” as disclosed in paragraph 0028 of the
specification as originally filed.
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