Appeal No. 98-0455
Application 08/467,247
Looking to the examiner's rejection of claims 3, 4,
7 and 8 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 Strahilevitz, 668 F.2d 1229, 1232, 212
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