Appeal 2007-0001
Application 09/944,589
The rejections as presented by the Examiner are as follows:
1. Claims 1-12 are rejected under 35 U.S.C. § 112, ¶ 1.
2. Claims 1-12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Alff in view of Appellant’s prior art admission (filed
March 18, 2004) based on Knack.
In regard to the rejection under 35 U.S.C. § 112, first paragraph
rejection, the Examiner contends:
“Since applicant has not clearly disclosed the mixing ratio and
materials needed in obtaining the claimed encoder, it would be difficult for
one in the art to make the claimed encoder without undue experimentation.”
(Answer 4).
The Appellant contends that the Examiner has failed to establish that
undue experimentation would be required to make and use the claimed
invention.
The Appellant also contends that the Examiner failed to establish a
prima facie case of obviousness in regard to claims 1-12. Specifically,
Appellant contends that there is no motivation to combine the teachings of
the prior art and that even if such combination is properly made, the prior art
references fail to disclose each element of the claimed invention.
ISSUES
The first issue is whether the Appellant has shown that the Examiner
erred in holding that the Appellant’s disclosure failed to enable a person of
ordinary skill in the art to make and use the invention. This issue turns on
whether the Examiner has established that it would require undue
experimentation to practice the claimed invention.
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