Ex Parte Brueckner et al - Page 11



             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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