Appeal No. 97-1437
Application 08/356,227
and to the respective positions articulated by appellant and the
examiner. As a consequence of our review we have reached the
determination which follows.
Looking to the examiner's rejection of claim 18 on
appeal, we observe that the first paragraph of 35 U.S.C. § 112
requires, inter alia, that the specification of a patent (or
an application for patent) enable any person skilled in the art
to which it pertains to make and use the claimed invention.
Although the statute does not say so, enablement requires that
the specification teach those skilled in the art to make and
use the invention without "undue experimentation." In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). That
some experimentation may be required is not fatal; the issue is
whether the amount of experimentation required is "undue." Id.
at 736-37, 8 USPQ2d at 1404.
Moreover, in rejecting a claim for lack of enablement,
it is well settled that the examiner has the initial burden of
producing reasons that substantiate the rejection. See In re
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