Appeal No. 95-0175
Application 07/894,147
Opinion
We do not sustain the rejection of claims 10-19 under
35 U.S.C. � 112, first paragraph, as being based on an unenabling
disclosure.
We sustain the rejection of claims 1, 6-8, 10-13, 15, 16, 18
and 19 under 35 U.S.C. � 103 as being unpatentable over prior
art.
We do not sustain the rejection of claims, 2-5, 9, 14 and 17
as being unpatentable over prior art.
The rejection based on 35
U.S.C. � 112, first paragraph
The examiner has rejected claims 10-19 as being based on an
unenabling disclosure. The test for enablement under 35 U.S.C.
� 112, first paragraph, is whether one reasonably skilled in the
art could make or use the claimed invention from the disclosed
subject matter together with information in the art without undue
experimentation. United States v. Telectronics, Inc., 857 F.2d
778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert. denied,
490 U.S. 1046 (1989). A disclosure can be enabling even though
some experimentation is necessary. Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir.
1986), cert. denied, 480 U.S. 947 (1987). The issue is whether
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