Appeal No. 2002-0296 Page 5
Application No. 09/248,553
The full basis for this rejection as set forth in the answer (p. 3) is that "[t]he
specification fails to disclose how the laser engraving is disposed in the interior of the
cover as shown in Figure 5." However, this is insufficient to meet the examiner's
threshold burden of establishing lack of enablement under the first paragraph of
35 U.S.C. § 112 for the reasons that follow.
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
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
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