Appeal No. 95-2917
Application 08/082,895
respective details thereof.
OPINION
We will not sustain the rejection of claims 1 and 3
through 29 under 35 U.S.C. §§ 103 or 112.
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, 305(CCPA 1974);
In re Brandstadter, 484 F.2d 1395, 1404, 179 USPQ 286, 293
(CCPA 1973); and In re Gay, 309 F.2d 769, 774, 135 USPQ 311,
316 (CCPA 1962). If the Examiner had a reasonable basis for
questioning the sufficiency of the disclosure, the burden
shifted to the Appellant to come forward with evidence to
Examiner stated in the Examiner’s letter, mailed March 20, 1998 that the March
2, 1998 reply brief has been entered and considered but no further response by
the Examiner is deemed necessary.
3The Examiner responded to the brief with an Examiner's answer, mailed
October 26, 1994. We will refer to the Examiner's answer as simply the
answer. We note that the answer contains a new ground of rejection rejecting
claims 1 and 3 through 29 under 35 U.S.C. § 112, first paragraph. The Examiner
responded to the reply brief with a supplemental Examiner's answer, mailed
December 16, 1997.
4
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