Ex parte NAOKI KOYAMA, et al. - Page 4




                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.                                                                    
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