Appeal No. 96-3923
Application 08/309,790
create a gross bronchoconstrictor response
in the user. The quantity, strength or the
like of the irritant needed to achieve the
desired results of sufficiently simulating
respiratory tract smoking sensations while
not creating gross bronchoconstrictor
response is not disclosed. No comparative
test results have been submitted. [Answer,
page 5.]
Considering first the rejection under 35 U.S.C. § 112,
first paragraph, we note that the test regarding enablement is
whether the disclosure, as filed, is sufficiently complete to
enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation. See In re
Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 302 (CCPA 1974)
and In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed.
Cir. 1988). Additionally, as the court in In re Gaubert, 524
F.2d 1222, 1226, 187 USPQ 664, 667 (CCPA 1975) set forth in
quoting from Martin v. Johnson, 454 F.2d 746, 751, 172 USPQ
391, 395 (CCPA 1972):
To satisfy §112, the specification disclo-
sure must be sufficiently complete to
enable one of ordinary skill in the art to
make the invention without undue
experimentation, although the need for a
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