Appeal No. 97-0598
Application 08/322,670
OPINION
We have carefully considered the entire record before us,
and we will reverse the rejection of claims 5 through 8, 11
through 14, 16, 18 and 19 under 35 U.S.C. § 112, first
paragraph. The Examiner has failed to set forth a prima
facie case for the rejection, which is entirely based on the
lack of enablement.
An analysis of whether the claims under appeal are
supported by an enabling disclosure requires a determination
of whether that disclosure contains sufficient information
regarding the subject matter of the appealed claims as to
enable one skilled in the pertinent art to make and use the
claimed invention. The test for enablement is whether one
skilled in the art could make and use the claimed invention
from the disclosure 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, 109 S.Ct. 1954 (1989); In re
Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
In order to make a rejection, the Examiner has the
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