Appeal No. 2000-0287 Page 3
Application No. 08/663,300
reasonably convey to one skilled in the relevant art that the appellant, at the time the application
was filed, had possession of the claimed invention.2
(3) Claims 11, 14 and 18 stand rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the subject matter which
the appellant regards as the invention.
Reference is made to the brief and reply brief (Paper Nos. 20 and 24) and the answer
(Paper No. 21) for the respective positions of the appellant and the examiner with regard to the
merits of these rejections.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art, and to the respective positions
articulated by the appellant and the examiner. As a consequence of our review, we make the
determinations which follow.
Rejection (1)
Insofar as the enablement requirement is concerned, the dispositive issue is whether the
appellant’s disclosure, considering the level of ordinary skill in the art as of the date of the
appellant’s application, would have enabled a person of such skill to make and use the
appellant’s invention without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232,
2The examiner has withdrawn this rejection as to claims 1-12, 16 and 19 in light of the amendment filed
February 5, 1999 (see Paper No. 17).
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