Appeal 2007-1083
Application 09/847,093
1 how this removes the multi-path from the signal or why it is important to the
2 invention. It is additionally argued that pages 5 and 6 provide equations that
3 appear to teach how the multi-path is removed, but that it is difficult to
4 understand how and why these equations are applied without a written
5 description as to their relation to the present invention. (Id.) Appellant
6 asserts (Br. 1) that the original application is understandable by anyone with
7 ordinary skill in the art of digital signal processing, and that the Examiner,
8 obviously, does not have ordinary skill in the art. Appellant provided a
9 textbook entitled Digital Signal Processing which contains what one of
10 ordinary skill in the art should know. (Id.) It is argued (Br. 2) that "[a]ny
11 fair-minded engineer would admit that if you understand the contents of the
12 book, you can understand the original application."
13
14 ANALYSIS
15 Notwithstanding the fact that the Examiner argues a lack of
16 enablement and/or written description, the Examiner has not rejected the
17 claims under the first paragraph of 35 U.S.C. § 112. If the Examiner
18 believes that the description is non-enabling or does not provide an adequate
19 written description of the claimed invention, the Examiner should enter a
20 rejection under the first paragraph of 35 U.S.C. 112. Should the Examiner
21 enter a rejection based upon lack of enablement, the Examiner should
22 address the Wands factors, as appropriate. See In Wands, 858 F.2d 731, 737,
23 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
3
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