Appeal No. 98-0979 Page 12
Application No. 08/517,909
would be no need for the applicant to go to the trouble and
expense of supporting his presumptively accurate disclosure."
In re Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
With this as background, we turn to the specific
rejection under 35 U.S.C. § 112, first paragraph, made by the
examiner of the claims on appeal. The examiner's statement of
this rejection is as follows:
Claims 1 through 20 are rejected under 35 U.S.C. § 112,
second paragraph, as based on a disclosure which is not
enabling. Steps critical or essential to the practice of
the invention, but not included in the claim(s) is not
enabled by the disclosure. In re Mayhew, 527 F.2d 1229,
188 USPQ 356 (CCPA 1976). The scope of the claims goes
beyond the scope of the specification. [answer, p. 4]
We agree with the appellants argument (amended brief, pp.
9-11) that the claims under appeal are supported by an
enabling disclosure. The dispositive issue is whether the
appellants' disclosure, considering the level of ordinary
skill in the art as of the date of the appellants'
application, would have enabled a person of such skill to make
and use the appellants' invention without undue
experimentation. The threshold step in resolving this issue,
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