Appeal No. 2002-0033 Page 8
Application No. 09/372,020
For the reasons set forth above, claims 18 to 34 comply with the written
description requirement of 35 U.S.C. § 112, first paragraph.
The enablement requirement
The examiner also determined that the enablement requirement had not been
complied with since the claims under appeal have been broadened by the omission of
the limitation that the prismatic portion is provided on the exterior surface.
An analysis of whether the claims under appeal are supported by an enabling
disclosure requires a determination of whether that disclosure contained sufficient
information regarding the 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), cert. denied, 109 S.Ct. 1954 (1989); In re Stephens, 529 F.2d 1343,
1345, 188 USPQ 659, 661 (CCPA 1976).
In order to make a nonenablement rejection, the examiner has the initial burden
to establish a reasonable basis to question the enablement provided for the claimed
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