Ex parte SWARTZEL et al. - Page 34




          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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