Appeal 2007-1200
Application 09/900,251
comment as to the prior art of record in the case (Answer 4). In fact, the Appellant
filed information disclosure statements dated (1) October 15, 2001 (listing two
patents); (2) December 3, 2001 (listing 22 articles totaling more than 500 pages
that are also included in the prosecution history); and (3) July 9, 2004 (listing 12
articles). The Examiner does not address why this constitutes a lack of prior art.
Since the Examiner’s weighing of the In re Wands factors relies heavily on his
conclusion that there is a lack of prior art—a conclusion which is unsupported by
the record—he has failed to set forth a reasonable explanation as to why he
believes that the scope of protection provided by the disputed claims is not
adequately enabled.
Second, the Examiner found that the nature of the invention is not clear. For
example, he found that “the specification does not adequately disclose a specific
pump software component, distance software agents, pheromone, walker software
component, type of sensor system or control system, which would be correlated
and organized to enable each of the elements to form a complete operative system”
(Answer 4). The Examiner also found that:
it is unclear as to what kind of control system or sensor
system is utilized. The specification provides no
guidance or working example as to what constitutes the
pump software component recited in the claimed system.
How does the distance software component deposit the
pheromone? The specification provide[s] no guidance or
working example as to what constitutes a pheromone as
recited in the claimed system. The specification
provide[s] no guidance or working example as to what
constitutes a walker software component as recited in the
claimed system (see MPEP § 2164.02).
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