Appeal No. 97-3918
Application 08/447,901
explains that the gain of that amplifier is switched to a high
gm value during time intervals T1 and T2 of the waveform of
Figure 9(D). This necessarily implies the use of apparatus
for performing this function, which is sufficient to provide
written description support for the "gain control" box shown
in the proposed amendment to Figure 5. Consequently, the
proposed amendment would not introduce new matter into the
application.
For the same reason, we will not sustain the rejection of
claims 2 and 19 under § 112, first paragraph, for lacking
written support.
B. The enablement issue
Although, as noted above, the reasoning given in support
of the rejection under § 112, first paragraph, suggests that
the basis for the rejection is that the claimed subject matter
lacks written description support, we have also considered
whether it is based on an enabling disclosure. A disclosure
satisfies the enablement requirement of § 112, first
paragraph, if the artisan would have been able to make the
claimed invention without undue experimentation. In re Vaeck,
947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991); In
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