Appeal No. 1998-2941 Page 34
Application No. 08/061,985
Reexamination Control No. 90/003,682
a determination of whether that disclosure contained
sufficient information regarding the subject matter of claims
20-27 and 46/20 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
initial burden to establish a reasonable basis to question the
enablement provided for the claimed invention. See In re
Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993) (examiner must provide a reasonable explanation as
to why the scope of protection provided by a claim is not
adequately enabled by the disclosure). A disclosure which
contains a teaching of the manner and process of making and
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