Appeal No. 1997-1190
Application No. 08/427,972
is lack of enablement under 35 U.S.C. 112, first paragraph,
not failure to disclose the best mode. Upon review of the5
objection to the specification made in the final rejection, it
is evident that the examiner considers the appealed claims to
be based on a specification which fails to satisfy the
enablement requirement, rather than the best mode requirement,
in the first paragraph of § 112. Accordingly, we will treat6
the standing § 112, first paragraph, rejection as being based
upon the examiner's conclusion that the underlying
specification fails to adequately teach how to make and/or use
the invention, i.e., failure of the specification to provide
an enabling disclosure.
The first paragraph of 35 U.S.C. § 112 requires, inter
alia, that the specification of a patent (or an application
for patent) enable any person skilled in the art to which it
pertains to make and use the claimed invention. Although the
statute does not say so, enablement requires that the
The first paragraph of § 112 contains three separate and distinct5
requirements, namely the written description requirement, the enablement
requirement and the best mode requirement. See In re Wilder, 736 F.2d 1516,
1520, 222 USPQ 369, 372 (Fed. Cir. 1984).
Failure to set forth any mode of carrying out the invention is6
actually an enablement problem. See In re Glass, 492 F.2d 1228, 1233,181 USPQ
31, 35 (CCPA 1974)
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