Appeal No. 1998-2823
Application No. 08/458,010
scope of the claimed invention without ‘undue
experimentation’” (In re Wright, 999 F.2d 1557, 1561, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993)).
At page 5 of the answer, the examiner indicates a belief
that the scope of enablement provided to one of ordinary skill
in the art by the disclosure is not commensurate with the
scope of protection sought by the claims. However, no
rejection based on this ground is found in the final
rejection.
Accordingly, we also remand the application to the
examiner to consider whether any claim should be rejected
under
35 U.S.C. § 112, first paragraph, on the basis that the scope
of
the claims is not commensurate with the scope of enablement.
See Manual of Patent Examining Procedure (MPEP) § 2164.08 (7th
ed., rev. 1, Feb. 2000).
CONCLUSION
To summarize, the decision of the examiner to reject
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