Appeal No. 96-0885
Application 08/108,932
apparent, why this disclosure would not have conveyed to one
of ordinary skill in the art that as of appellant’s filing
date, appellant was in possession of a process wherein the
sheet layers are consistently folded about a fold line as
recited in appellant’s claims.
A specification complies with the 35 U.S.C. § 112, first
paragraph, enablement requirement if it allows those of
ordinary skill in the art to make and use the claimed
invention without undue experimentation. See In re Wright,
999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993);
Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d
1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984). The examiner
has the initial burden of establishing lack of enablement.
See Wright, 999 F.2d at 1561, 27 USPQ2d at 1513.
The examiner argues that he does not see how the defining
means on the sheet layer which allows the sheet layer to be
consistently folded can function without the use of
rod/support 16 which is not recited in any of appellant’s
claims. The examiner, however, does not explain why one of
ordinary skill in the art, in view of appellant’s
5
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