Appeal No. 1996-1253
Application 08/113,034
U.S.C. § 103, and we will reverse the
decisions of the examiner rejecting claims 1 to 23 under 35 U.S.C. § 112, first paragraph, and rejecting
claims 6 to 23 under 35 U.S.C. § 103.
Rejection of Claims 1 to 23 Under 35 U.S.C. § 112, First Paragraph:
We turn first to appellant’s arguments (Brief, pages 3 to 10 and 11 to 12) that the examiner
improperly rejected all of the claims on appeal under 35 U.S.C. § 112, first paragraph. Claims 1 to 23
stand rejected under 35 U.S.C. § 112, first paragraph, as containing subject matter which was not
described in the specification so as to enable any person skilled in the art to which it pertains, or with
which it is most nearly connected, to make and use the invention commensurate in scope with these
claims (see Answer, pages 3 to 5). Because we agree with appellant that undue experimentation would
not be required to enable the ordinarily skilled artisan to make and/or use the invention, we will not
sustain the examiner’s rejection under 35 U.S.C. § 112, first paragraph.
To comply with the enablement clause of the first paragraph of 35 U.S.C. § 112, the disclosure
must adequately describe the claimed invention so that the artisan could practice it without undue
experimentation. In re Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 302 (CCPA 1974); In re
Brandstadter, 484 F.2d 1395, 1407, 179 USPQ 286, 294-95 (CCPA 1973); In re Gay, 309 F.2d
769, 772, 135 USPQ 311, 315 (CCPA 1962). Stated another way, "[t]he test of enablement is
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