Appeal No. 1997-0595 Page 6
Application No. 08/154,911
We will not sustain the rejection of claims 13 to 17
under 35 U.S.C. § 112, first and second paragraphs.
The only reason set forth by the examiner for this
rejection was that
[s]ince claims 13-16 [sic, 13-17] are drawn to a
method of producing a cut pad and claim 1 is drawn to a
cushioning conversion machine, claims 13-16 [sic, 13-17]
are rendered indefinite since it is unclear whether an
[sic, a] method or an apparatus is being claimed.
Turning first to the examiner's rejection based upon the
enablement requirement set forth in the first paragraph of 35
U.S.C. § 112, we note that the test for enablement is whether
one skilled in the art could make and use the claimed
invention from the disclosure coupled with information known
in the art without undue experimentation. See United States
v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223
(Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re
Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
However, in order to make a rejection, the examiner has the
initial burden to establish a reasonable basis to question the
enablement provided for the claimed invention. See In re
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