Appeal No. 1997-1081 Page 4
Application No. 08/111,922
The enablement issue
We will not sustain the rejection of claims 6 through 8
under 35 U.S.C. § 112, first paragraph, as failing to
adequately teach how to make and/or use the invention, i.e.,
failing to provide an enabling disclosure.
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).
Thus, the dispositive issue is whether the appellants'
disclosure, considering the level of ordinary skill in the art
as of the date of the appellants' application, would have
enabled a person of such skill to make and use the appellants'
invention without undue experimentation. The threshold step
in resolving this issue is to determine whether the examiner
has met his burden of proof by advancing acceptable reasoning
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