Appeal No. 1996-2336
Application 08/270,345
limit our discussion to claims 2 and 3 and one claim within
each of the other groups, i.e., claims 1 and 12. See In re
Ochiai, 71 F.3d 1565, 1566 n.2, 37 USPQ2d 1127, 1129 n.2 (Fed.
Cir. 1995); 37 CFR § 1.192(c)(7)(1995).
Rejection of claims 1-3 and 6-19 under
35 U.S.C. § 112, first paragraph
A specification complies with the 35 U.S.C. § 112, first
paragraph, enablement requirement if it allows those of
ordinary skill in the art to make and use the claimed
invention without undue experimentation. See In re Wright,
999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993);
Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d
1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984).
The examiner argues that appellant’s claimed invention is
not enabled because stirring, which is used in the examples in
the specification, is included within the definition of
mechanical pre-emulsifying which is excluded by claims 1 and
12 (answer, page 4).
The relevant question is not whether mechanical pre-
emulsification and appellant’s mixing can both involve
stirring but, rather, whether appellant’s specification would
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