Ex parte HANSON et al. - Page 20




          Appeal No. 94-3255                                                          
          Application 07/673,264                                                      


          we reverse the examiner's rejections under this section of the              
          statute and direct attention to the Other Issues section,                   
          infra.                                                                      
                                    Other Issues                                      
               In the event of further prosecution of this application,               
          there are several issues which should be considered by the                  
          examiner and the appellants.                                                


                                         I.                                           
               As discussed above, the enablement issues raised by the                
          examiner cannot properly be explored until the record is clear              
          as to just what the claimed invention is.  Panduit Corp. v.                 
          Dennison                                                                    
          Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed. Cir.               
          1987); In re Moore, supra.  To satisfy the enablement                       
          requirement of 35 U.S.C. § 112, first paragraph, the                        
          specification must teach one skilled in the art how to “make                
          and use” the full scope of the claimed invention without undue              
          experimentation.  PPG Indus. v. Guardian Indus. Corp., 75 F.3d              
          1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996); In re                    

                                         20                                           





Page:  Previous  13  14  15  16  17  18  19  20  21  22  23  24  25  26  27  Next 

Last modified: November 3, 2007