Appeal No. 98-0103 Page 4
Application No. 08/248,745
examiner. As a consequence of our review, we make the
determinations which follow.
The enablement issue
We do not sustain the rejection of claims 1 through 7 and 10
through 22 under 35 U.S.C. § 112, first paragraph, as failing to
adequately teach how to make and/or use the invention, i.e.,
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
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