Appeal No. 97-0925 Page 4
Application No. 08/328,159
We will not sustain the examiner's rejection of claims 1, 3,
5 through 9, 11 and 13 through 16 under 35 U.S.C. § 112, first
paragraph, as failing to provide an enabling disclosure.
The test for enablement is whether one skilled in the art
could make and use the claimed invention from the disclosure
coupled with information known in the art without undue
experimentation. See United States v. Telectronics, Inc., 857
F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert.
denied, 109 S.Ct. 1954 (1989); In re Stephens, 529 F.2d 1343,
1345, 188 USPQ 659, 661 (CCPA 1976).
Thus, the dispositive issue is whether the appellant's
disclosure, considering the level of ordinary skill in the art as
of the date of the appellant's application, would have enabled a
person of such skill to make and use the appellant's invention
without undue experimentation. The threshold step in resolving
this issue is to determine whether the examiner has met his
burden of proof by advancing acceptable reasoning inconsistent
with enablement. This the examiner has not done. In fact, the
examiner has only pointed to claim language that is unclear in
the examiner's opinion. If the language of a claim is unclear,
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