Ex parte CHAPMAN - Page 9




                 Appeal No. 1998-3301                                                                                     Page 9                        
                 Application No. 08/784,361                                                                                                             


                 claims 8, 9, 11, 17, 18, 21, 22 and 23 under 35 U.S.C. § 112,                                                                          
                 second paragraph.                                                                                                                      


                 The enablement rejection                                                                                                               
                          We will not sustain the rejection of claims 2, 4 through                                                                      
                 19 and 25 through 30 under 35 U.S.C. § 112, first paragraph.                                                4                          


                          An analysis of whether the claims under appeal are                                                                            
                 supported by an enabling disclosure requires a determination                                                                           
                 of whether that disclosure contained sufficient information                                                                            
                 regarding the subject matter of the appealed claims 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                                                                             


                          4This rejection concerns the locking system for the doors                                                                     
                 and the motorized system of Figure 15 (see page 2 of the final                                                                         
                 rejection).  This rejection no longer concerns the manner in                                                                           
                 which the mail flag is maintained in place, since such                                                                                 
                 objection has been rescinded by the examiner (answer, p. 4).                                                                           







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