Appeal No. 1999-2057
Application 08/405,062
The Examiner relies on the following reference:
Rae et al. (Rae) 5,136,634 August 4, 1992
Claims 1-18 stand rejected under 35 U.S.C. § 112, first
paragraph, as based on a nonenabling disclosure.
Claims 1-10 and 12-18 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Rae.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rae.
We refer to the final rejection (Paper No. 5) and the
examiner's answer (Paper No. 11) (pages referred to as "EA__")
for a complete statement of the Examiner's position, and to
the brief (Paper No. 9) (pages referred to as "Br__") for a
statement of Appellants' arguments thereagainst.
OPINION
35 U.S.C. § 112, first paragraph, lack of 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
- 3 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007