Appeal 2007-2911
Application 10/454,350
“operative to” language recited in claim 15 is in compliance with the
“written description” requirement of 35 U.S.C. § 112, first paragraph. See
In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
Additionally, the Examiner should ensure compliance with the
enablement requirement of § 112, first paragraph. As set forth in the
Manual of Patent Examining Procedure (MPEP), § 2106 (8th ed., Rev. 2,
May 2004):
For a computer-related invention, the disclosure must enable a
skilled artisan to configure the computer to possess the requisite
functionality, and, where applicable, interrelate the computer
with other elements to yield the claimed invention, without the
exercise of undue experimentation. The specification should
disclose how to configure a computer to possess the requisite
functionality…, unless a skilled artisan would know how to do
so without such disclosure. [Citations omitted].
The Examiner should determine if the Appellants’ Specification
provides sufficient enablement to practice the invention as claimed without
undue experimentation. See also MPEP § 2106.01. In other words, does
Appellants’ Specification enable one of ordinary skill in this art to
accomplish the functions recited in claim 15 on appeal without resorting to
undue experimentation?
This remand is not made for the purpose of directing the Examiner to
further consider the grounds of rejection. Accordingly, 37 C.F.R.
§ 41.50(a)(2)(2005) does not apply.
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