Ex parte NICHTER - Page 10




          Appeal No. 96-2866                                        Page 10           
          Application No. 08/185,221                                                  


          greater than those installed by an oscillating drill.  Thus,                
          there is no descriptive support that the "fixation wire" (which             
          as broadly recited includes all fixation wires) requires                    
          "comparatively more force for removal" as independent claim 24              
          sets forth.  In this regard, it should be noted that there is a             
          lack of descriptive support for claims which set forth                      
          essential elements of the invention in terms which are broader              
          than the supporting disclosure.  See Gentry Gallery, Inc. v.                
          Berkline Corp., 134 F.3d 1473, 1480, 45 USPQ2d 1498, 1503 (Fed.             
          Cir. 1998).                                                                 
               Claims 24-26 are rejected under 35 U.S.C. § 112, first                 
          paragraph, as being based on a non-enabling disclosure.  We                 
          initially observe that the test regarding enablement is whether             
          the disclosure, as filed, is sufficiently complete to enable                
          one of ordinary skill in the art to make and use the claimed                
          invention without undue experimentation.  In re Scarbrough, 500             
          F.2d 560, 566, 182 USPQ 298, 302 (CCPA 1974) and In re Wands,               
          858 F.2d 731, 737 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).  The                
          experimentation required, in addition to not being undue, must              
          not require ingenuity beyond that expected of one of ordinary               








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