Appeal No. 96-1457
Application No. 08/098,165
disclosure.
Appellants’ argument to the contrary notwithstanding, the “holes
or light transmitting passages in web 56" would expose the film
to light before the shutter is opened, and the holes would be in
the middle of the picture taking area of the film. In the
absence of disclosure or a satisfactory explanation by appellants
as to how such problems would be overcome, we are of the opinion
that the skilled artisan would have to resort to undue
experimentation to solve the problem of light exposure to the2
film via the viewfinder apertures, and the intrusiveness of the
“light transmission passages in web 56.” The lack of enablement
rejection under the first paragraph of 35 U.S.C. § 112 is
sustained.
To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently. See Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043,
1047, 34 USPQ2d 1565, 1567 (Fed. Cir.), cert. denied, 516 U.S.
988 (1995). Appellants argue that Cummins does not disclose
2The 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).
6
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