Appeal No. 97-2650 Page 7
Application No. 08/489,257
the pertinent art to make and use the claimed invention. 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).
In order to make a rejection, the examiner has the initial
burden to establish a reasonable basis to question the enablement
provided for the claimed invention. See In re Wright, 999 F.2d
1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner
must provide a reasonable explanation as to why the scope of
protection provided by a claim is not adequately enabled by the
disclosure). A disclosure which contains a teaching of the
manner and process of making and using an invention in terms
which correspond in scope to those used in describing and
defining the subject matter sought to be patented must be taken
as being in compliance with the enablement requirement of
35 U.S.C. § 112, first paragraph, unless there is a reason to
doubt the objective truth of the statements contained therein
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