Appeal 2007-2446
Application 09/817,998
We now enter a new rejection of claim 22 under 35 U.S.C. § 112 first
and second paragraphs. As discussed above, claim 22 is dependent upon
and further modifies claim 1 by reciting that “the recipient is notified via
television of the availability of the deposited mail.” We find that it is
ambiguous as to whether the scope of claim 22 requires: a) that the tactile
communication device is a television, or b) that the user is notified by tactile
communication device and a television. Appellant’s specification sheds no
light on the issue as it does not address notification by television.2 It is for
the later interpretation that we apply the rejection under the first paragraph
of 35 U.S.C. § 112.
The test for enablement under the first paragraph of 35 U.S.C. § 112,
is whether one reasonably skilled in the art could make or use the claimed
invention from the disclosed subject matter together with information in the
art, without undue experimentation. United States v. Telectronics, Inc., 857
F.2d 778, 785 (Fed. Cir. 1988). A disclosure can be enabling even though
some experimentation is necessary. Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986).
Appellant’s Specification on page 10, lines 20 through 22, discuss that
the tactile communications device may be a personal computer with a Braille
printer. We do not find any disclosure in Appellant’s Specification of using
a television as a tactile display device.3 Similarly, there is no evidence of
2 We consider the written description requirement to be met as Appellant’s
originally filed claim 22 is substantially identical to the current claim 22.
3 We note that we consider claim 19 (recipient notified by e-mail) and claim
21 (recipient notified by facsimile) to be enabled as they both deal with
electronic document formats which with minimal experimentation could be
printed out with a computer and Braille printer. Further, we consider claim
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