Appeal No. 95-0833
Application 08/161,978
“The test of enablement is whether one reasonably skilled in
the art could make or[sic and] use the invention from the
disclosures in the patent coupled with information known in the
art without undue experimentation.” United States v.
Telectronics, Inc., 857 F.2d 778,785, 8 USPQ2d 1217, 1223 (Fed.
Cir. 1988), citing Hybritech, Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986). The
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).
The test to be applied under the written description portion
of 35 U.S.C. § 112, first paragraph, is whether the disclosure of
the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of later
claimed subject matter. Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1565, 19 USPQ2d 1111, 1118 (Fed. Cir. 1991); rehearing
denied, (Fed. Cir. July 8, 1991) and rehearing en banc denied,
(Fed. Cir. July 29, 1991).
It is noted that claims 10 through 13 were not originally
filed claims. They were added initially by an amendment on
December 3, 1993, with the current version of claim 10 being
entered in the amendment filed on March 3, 1994. None of the
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