Appeal No. 96-0122
Application No. 08/096,581
of 35 U.S.C. § 112 is reversed because the examiner has not
questioned the adequacy of the disclosed formulae per se to teach
one of ordinary skill in the art to make and/or use the claimed
invention without undue experimentation.6
DECISION
The decision of the examiner rejecting claims 1, 2 and 5
under the first and second paragraphs of 35 U.S.C. § 112 is
reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
RICHARD TORCZON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
6The enablement clause of the first paragraph of 35 U.S.C.
§ 112 requires that the disclosure adequately describe the
claimed invention so that the artisan could practice it without
undue experimentation. See Genentech Inc. v. Novo Nordisk A/S,
108 F.3d 1361, 1364, 42 USPQ2d 1001, 1004 (Fed. Cir.), cert.
denied, 118 S.Ct. 397 (1997).
7
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