Appeal No. 1996-0047
Application No. 08/047,758
as lacking the written description for the presently claimed
subject matter in the original application disclosure.
With respect to the enablement requirement under 35
U.S.C.
§ 112, first paragraph, we observe that the test is whether
one of ordinary skill in the art could make or use the claimed
invention from the disclosure, as filed, 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, 490 U.S.
1046 (1989); In re Wands, 858 F.2d 731, 737 8 USPQ2d 1400,
1404 (Fed. Cir. 1988). It is incumbent upon the examiner to
initially produce reasons that substantiate a rejection based
on lack of enablement. See In re Marzocchi, 439 F.2d 220,
224, 169 USPQ 367, 370 (CCPA 1974). In other words, the
examiner must supply a reasonable basis to question the
adequacy or accuracy of appellants’ presumptively correct
disclosure. Marzocchi, 439 F.2d at 224, 169 USPQ at 370. The
examiner’s reasoning must take into account, inter alia, those
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