Appeal No. 1998-2914
Application 08/510,971
OPINION
We have carefully reviewed the appellants' invention as
described in the specification, the appealed claims, and the
respective positions advanced by the appellants in the brief
and by the examiner in the answer. As a consequence of this
review, we will not sustain either of the above-noted
rejections.
Considering first the rejection of claims 1-10 under
35 U.S.C. § 112, first paragraph, we initially note 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
experi-mentation. In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988) and In re Scarbrough, 500 F.2d
560, 566,
182 USPQ 298, 302 (CCPA 1974). The experimentation required,
in addition to not being undue, must not require ingenuity
beyond that expected of one of ordinary skill in the art. See
In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 218 (CCPA
1976).
It is also well settled that the examiner has the initial
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007