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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