Appeal No. 98-0979 Page 10
Application No. 08/517,909
Rejection under 35 U.S.C. § 112, first paragraph
We will not sustain the rejection of claims 1 through 20
under 35 U.S.C. § 112, first paragraph, as based on a
disclosure which is not enabling.
An analysis of whether the claims under appeal are
supported by an enabling disclosure requires a determination
of whether that disclosure contained sufficient information
regarding the subject matter of the appealed claims as to
enable one skilled in 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 a claimed invention. See In re
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