Appeal No. 95-1484
Application 08/070,650
1320, 1322 (Fed. Cir. 1989). It is difficult to interpret the
subject matter of Claims 57, 64-66 and 68 in light of the
specification in this case, since the examiner and appellants
declined to consider the language of any claim separately from
the language appearing in Claim 49. The examiner stated
(Ans., p. 2, first para.):
The rejection of claims 49-68 stand or fall together
because appellant’s brief does not include a statement
that
this grouping of claims does not stand or fall together.
We shall consider Claims 57, 64-66, and 68 separately. Rather
than remand this case in its entirety to the examiner, we
proceed to the extent the claim language permits.
A specification fails to satisfy the requirements of
35 U.S.C. § 112, first paragraph, when it would not have
enabled persons skilled in the art to make and use the full
scope of the subject matter claimed, without undue
experimentation. In re Vaeck, 947 F.2d 488, 495-96, 20 USPQ2d
1438, 1444 (Fed. Cir. 1991). The examiner has the initial
burden to explain why the specification which supports Claims
57, 64-66, and 68 in this case would not have enabled persons
skilled in the art to make and use the full scope of the
subject matter claimed. See In re Marzocchi, 439 F.2d 220,
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