Appeal No. 95-3681
Application 07/956,705
first paragraph, for reasons set forth in the objection to the
specification. Claims 1 through 3, 5 through 20, 22 through 33
and 35 through 39 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Mincone and Treat. Claims 4, 21 and 34 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Mincone, Treat and Riskin.
Rather than repeat the arguments of Appellants or the
Examiner, we make reference to the brief and the answer for the
details thereof.
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claims 1 through 15 and 17 through
39 are properly rejected under 35 U.S.C. § 103. However, we do
not agree that claim 16 is properly rejected under 35 U.S.C.
§ 103 nor do we agree that claims 5, 9 and 35 through 39 are
properly rejected under 35 U.S.C. § 112, first paragraph, for the
reasons set forth infra.
In order to comply with the enablement provision of
35 U.S.C. § 112, first paragraph, the disclosure must adequately
describe the claimed invention so that the artisan could practice
it without undue experimentation. In re Scarbrough, 500 F.2d
560, 566, 182 USPQ 298, 302 (CCPA 1974); In re Brandstadter,
3
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