Appeal No. 95-2896 Page 9
Application No. 07/977,771
Compliance with the enablement provision of 35 U.S.C. § 112,
first paragraph does not require appellant to actually have
reduced the claimed method to practice.
Moreover, we observe that the examiner has not
convincingly explained how the teachings of the Prins and
Narayan patents would support the notion that undue
experimentation would have been required to practice the
invention claimed herein. Indeed, we agree with appellant
(brief, pages 11-14 and reply brief, page 3) that the examiner
has not even fairly represented the Prins and Narayan
references teachings regarding their diamond growth processes.
Accordingly, based on the present record, the rejection of
claims 1-11 under 35 U.S.C. § 112, first paragraph, for lack
of enablement cannot be sustained.
CONCLUSION
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