Appeal No. 96-1349
Application 08/002,168
To comply with the enablement clause of the first
paragraph of 35 U.S.C. § 112, the disclosure must provide an
adequate description such that the artisan could practice the
claimed
invention without undue experimentation. In re Scarbrough, 500
F.2d 560, 566, 182 USPQ 298, 303 (CCPA 1974); In re Brandstadter,
484 F.2d 1395, 1407, 179 USPQ 286, 295 (CCPA 1973). The burden
is initially upon the examiner to establish a reasonable basis
for questioning the sufficiency of the disclosure. In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982).
The Patent and Trademark Office (PTO) has the burden of giving
reasons, supported by the record as a whole, why the
specification is not enabling. Showing that the disclosure
entails undue experimentation is part of the PTO's initial
burden. In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219
(CCPA 1976). Enablement is not precluded by the necessity for
some experimentation. However, experimentation needed to
practice the invention must not be undue experimentation. The
key word is "undue",
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007