Appeal No. 2002-0098
Application No. 09/064,290
indeed enabling. In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993).
In the instant case, the examiner alleges that the disclosure fails to adequately
define how the “blocks” and “sub-blocks” of electronic value are actually transferred
between a “source” and one or more “users,” or between a “payer” and a “payee,” so as
to achieve the “asserted advantages of the invention....” (Answer at 3.) The examiner
finds it unclear how the claimed elements provide at least the “asserted advantages”
listed at page 4 of the Answer. The “advantages,” however, are identified in the written
description and Abstract of the disclosure, rather than in the claims before us.
Appellants respond to the rejection by, inter alia, countering that the examiner
has failed to meet the initial burden in setting out a case for lack of enablement. (Brief
at 7-8.) Appellants submit that a focus on “asserted advantages,” rather than on the
claimed subject matter, is improper in a determination as to whether a disclosure is
enabling under 35 U.S.C. § 112, first paragraph. (Brief at 8.)
While “asserted advantages” of an invention may be highly relevant in, for
example, an obviousness inquiry under 35 U.S.C. § 103, we know of no legal principle
which requires that unclaimed features or unclaimed “advantages” be enabled by a
disclosure. Rather, the enablement inquiry under 35 U.S.C. § 112, first paragraph is to
ascertain whether the disclosure enables one skilled in the art to make and use “the
invention” -- i.e., the subject matter set forth by the claims -- without undue
experimentation.
-4-
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007