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 ordinaryPage: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 NextLast modified: November 3, 2007