Appeal No. 95-3811
Application No. 08/249,081
Claims 3-6 and 13 stand rejected under 35 U.S.C. 112, first
paragraph, as being based upon a nonenabling disclosure.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the brief and the answer for
the respective details thereof.
Opinion
We reverse this rejection.
Generally speaking, “[t]he test of enablement is whether
one reasonably skilled in the art could make or [sic and] use
the invention from the disclosures in the patent coupled with
information known in the art without undue experimentation.”
United States v. Telectronics, Inc., 857 F.2d 778, 785, 8
USPQ2d 1217, 1223 (Fed. Cir. 1988), citing Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81,
94 (Fed. Cir. 1986). The specification need not disclose what
is well known in the art. In re Buchner, 99 F.2d 660, 18 USPQ
2d 1331, 1332
[Fed. Cir. 1991].
It appears that the examiner had reasonably basis for
questioning the adequacy of the disclosure upon our review of
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