Appeal No. 95-2730
Application No. 08/169959
Claims 5 through 7 stand rejected under 35 U.S.C. § 112,
first paragraph, as relying on a non-enabling disclosure.
Reference is made to the brief and answer for the
respective positions of appellant and the examiner.
OPINION
Compliance with the enablement clause of 35 U.S.C. § 112
requires that the written description must be sufficiently
full, clear, concise and exact to enable the artisan to
practice the claimed invention without resort to undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563-64 (CCPA 1982). The scope of enablement
provided by the disclosure must be commensurate with the scope
of protection sought by the claims. Phillips Petroleum Co. v.
U.S. Steel Corp., 673 F. Supp. 1278, 6 USPQ2d 1065, 1074 (D.
Del 1987), aff’d, 865 F.2d 1247, 1251, 9 USPQ2d 1461, 1464
(Fed. Cir. 1989).
To comply with the enablement clause of the first
paragraph of 35 U.S.C. § 112, the disclosure must adequately
describe the claimed invention so that the artisan could
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