Appeal No. 98-2769
Application 08/485,960
conflicting viewpoints advanced by the examiner and appellants regarding those rejections, we make
reference to the examiner's answer (Paper No. 14, mailed March 17, 1998) for the examiner's
reasoning in support of the rejections, and to appellants' brief (Paper No. 13, filed December 8, 1997)
for appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to appellants’
specification and claims, to the applied prior art references, and to the respective positions articulated
by appellants and the examiner. As a consequence of our review, we have made the determinations
which follow.
We turn first to the examiner's rejection of claims 9 and 19 under 35 U.S.C. § 112, first
paragraph, as being based on a non-enabling disclosure. It is by now well-established law that the test
for compliance with the enablement requirement in the first paragraph of 35 U.S.C. § 112 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 Moore, 439 F.2d 1232; 1235, 169 USPQ
236, 238 (CCPA 1971). See also In re Scarborough, 500 F.2d 560, 566, 182 USPQ 298, 303
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