Ex Parte KONDO et al - Page 3



          Appeal No. 2001-1193                                                        
          Application No. 08/463,761                                                  
          subject matter of the appealed claims as to enable one skilled              
          in the pertinent art to make and use the claimed invention.  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); In re Stephens, 529 F.2d 1343, 1345,           
          188 USPQ 659, 661 (CCPA 1976).                                              
               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                   
          Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir.             
          1993) (examiner must provide a reasonable explanation as to why             
          the scope of protection provided by a claim is not adequately               
          enabled by the disclosure).  A disclosure which contains a                  
          teaching of the manner and process of making and using an                   
          invention in terms which correspond in scope to those used in               
          describing and defining the subject matter sought to be patented            
          must be taken as being in compliance with the enablement                    
          requirement of 35 U.S.C. § 112, first paragraph, unless there               
          is a reason to doubt the objective truth of the statements                  
          contained therein which must be relied on for enabling support.             

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