Appeal 2007-1762
Application 10/218,245
invention” 5 (Answer 11). Regarding claim 2, Appellants argue that the
claim language does not require user-initiated synchronization (Br. 13-14).
Appellants further argue that this step would occur in the claimed system,
and commonly occurs in other systems, such as when banks and credit
agencies synchronize information about users without user initiation (Br. 14
¶ 3).
Our reviewing court has determined that “[t]he test of enablement is
whether one reasonably skilled in the art could make or use the invention
from the disclosures in the patent coupled with information known in the art
without undue experimentation.” U.S. v. Telectronics, Inc., 857 F.2d 778,
785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988) (citation omitted). Furthermore,
“[t]he specification need not disclose what is well known in the art.” In re
Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991)
(citation omitted).
When we look to the instant Specification, we find adequate
disclosure to enable one reasonably skilled in the art to make and use the
invention without undue experimentation, as clearly shown in Fig. 2 (i.e.,
block 205 and the decision block to the left of block 205) and as discussed
on page 12, lines 1-3. Therefore, we will reverse the Examiner’s rejection of
claims 2, 20-23, 29-33, 36-38, and 41-43 as being based upon a disclosure
which is not enabling.
5 See Claim 2: “(d) if both said first e-mail address and said second e-mail
address are blank, then keeping said first e-mail address blank and a confirm
status of said first e-mail address NULL.” We note that this limitation does
not appear in independent claims 19, 25, 35, 40, or 44.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013