Appeal No. 2006-1707
Application No. 09/964,029
preliminary report by Appellants (brief, page 8). Additionally,
Appellants point out that the reference is much shorter than the
instant application and does not include specific elements of
claim 6 or their combination (id.) and therefore, does not place
the public in possession of the claimed invention (brief, page
12). The Examiner responds by stating that Appellants, among
other skilled artisans, were able to make the present invention
based on the applied prior art (answer, page 12).
Noting that Appellants also authored the applied reference,
We agree with the Examiner that the reference is indeed enabling.
With respect to the Examiner’s reasoning that Bartoletti is
enabling since Appellants were able to make the instant invention
based on the prior art disclosure, we agree with Appellants to
the extent that the authors of Bartoletti are the inventors of
the instant invention. However, the shorter length of Bartoletti
notwithstanding, the applied reference is more than a preliminary
report in that it includes sufficient information about the
functionality of the software such that lack of specific codes or
the process details does not render the disclosure non-enabling.
Additionally, the extra details in the instant specification
that Appellants argue to be missing in the applied reference
(reply brief, pages 2-3), are also absent in the claimed
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