Appeal 2007-1344
Application 10/045,789
THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Gormley US 5,513,107 Apr. 30, 1996
Becker US 6,184,661 B1 Feb. 6, 2001
Volkswagen Official Factory Repair Manual, Golf, GTI, Jetta 1999-2003,
Jetta Wagon, 2001-2003; Bentley Publishers; pp. 1-6 through 1-64 (“Manual”).
The following rejections are before us for review.
1. Claims 1-12 are rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.
2. Claims 1-5 and 7-11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the Manual in view of Gormley.
3. Claims 6 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over
the Manual in view of Gormley, and further in view of Becker.
ISSUE
The issues before us are whether Appellant has shown that the Examiner
erred in rejecting (1) claims 1-12 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the enablement requirement; (2) claims 1-5 and 7-11 under
35 U.S.C. § 103(a) as unpatentable over the Manual in view of Gormley; and (3)
claims 6 and 12 under 35 U.S.C. § 103(a) as unpatentable over the Manual in view
of Gormley, and further in view of Becker. The enablement issue turns on whether
the Specification provides adequate disclosure of indirect selection of control
parameters and direct selection of control parameters to allow one skilled in the art
to practice claims 1-12 without undue experimentation. The correctness of the
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