Appeal No. 96-0775
Application 07/990,769
§ 102(b) as being anticipated by Mowry.
Claims 2, 3, 9 and 10 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Tanabe.2
Reference is made to the brief and the answer for the
respective positions of the appellants and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse all of the rejections.
The enablement clause of the first paragraph of 35 U.S.C.
§ 112 merely requires that the disclosure adequately describe the
claimed invention so that the artisan could practice it without
undue experimentation. See Genentech Inc. v. Novo Nordisk A/S,
108 F.3d 1361, 1364, 42 USPQ2d 1001, 1004 (Fed. Cir. 1997). We
have reviewed the grounds (Answer, pages 3 through 5) for finding
lack of enablement, and we are not convinced that the skilled
artisan would have to resort to undue experimentation to arrive
at the claimed invention. Turning to ground number 1, the answer
to the alignment precision question posed by the examiner is yes,
but what does this have to do with the claimed invention. In
ground number 2, the answer to the question posed therein is also
2In view of the date of the Tanabe patent, the rejection is
assumed to be made under paragraph (e) of 35 U.S.C. § 102.
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007