Appeal No. 97-3071
Application 08/484,729
prior art cannot be based on speculations and assumptions (see
In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA
1962) and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496
(CCPA 1970)), we are constrained to reverse the examiner's
rejections of claims 1-13 and 15 under 35 U.S.C. § 102(b). We
hasten to add that this is a procedural reversal rather than
one based upon the merits of the § 102(b) rejection.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejections:
Claims 1-13 and 15 are rejected under 35 U.S.C. 112,
first paragraph, as being based on a non-enabling disclosure.
We initially observe 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. In re Wands,
858 F.2d 731, 737 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) and In
re Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 302 (CCPA
1974). The experimentation required, in addition to not being
undue, must not require ingenuity beyond that expected of one
of ordinary skill in the art. See In re Angstadt, 537 F.2d
3
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