Appeal No. 1999-0869
Application 08/644,608
Enablement
"The test of enablement is whether one reasonably skilled
in the art could make or 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). Patents are written to be read by those having
ordinary skill in the art and a patent need not teach, and
preferably omits, what is well known in the art. Paperless
Accounting, Inc. v. Bay Area Rapid Transit System,
804 F.2d 659, 664, 231 USPQ 649, 652 (Fed. Cir. 1986). The
U.S. Patent and Trademark Office must support a rejection for
lack of enablement with reasons. In re Marzocchi,
439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971).
Enablement is a question of law, which may involve subsidiary
questions of fact. Paperless Accounting, 804 F.2d at 664,
231 USPQ at 652.
We find ourselves in agreement with Appellants' arguments
in the Brief and Reply Brief that the subject matter of
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