Appeal No. 2000-0287 Page 4
Application No. 08/663,300
212 USPQ 561, 563-64 (CCPA 1982). In calling into question the enablement of the
appellant’s disclosure, the examiner has the initial burden of advancing acceptable reasoning
inconsistent with enablement. Id.
The examiner contends that one of ordinary skill in the art would not be able to make
and use the appellant's claimed invention because the appellant's claims define properties of
elements of the claims without corresponding recitation of the standards used to measure those
properties and because even the appellant's disclosure does not identify the particular JIS
standards used for such measurement tests (answer, page 5). For the reasons which follow, we
conclude that the examiner's rejection of the claims on this basis is not well founded.
Initially, we note that it is the function of the specification, not the claims, to set forth
the "practical limits of operation" of an invention. One does not look to claims to find out how
to practice the invention they define, but to the specification. See In re Johnson, 558 F.2d 1008,
1017, 194 USPQ 187, 195 (CCPA 1977).
As pointed out by the appellant (brief, pages 10-11), the appellant's specification (substitute
specification, pages 8-9; original specification, pages 5-6) describes the major points or parameters of
the measurements. From our perspective, the details provided in the appellant's specification appear to
be sufficient to have adequately informed one of ordinary skill in the art at the time the application was
filed of the process for carrying out the required measurements of the recited properties or, if
necessary, to have directed such a person to the proper Japanese Industrial Standard for additional
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