Appeal NO. 1996-3683
Application 08/207,393
rejecting the claims under 35 U.S.C. § 112, first paragraph,
it is the examiner's burden to establish lack of enablement by
compelling reasoning or objective evidence. In re
Strahilevitz, 668 F.2d 1229, 212 USPQ 561 (CCPA 1982); In re
Armbruster, 512 F.2d 676, 185 USPQ 152 (CCPA 1975).
We recognize that the enablement requirement of the first
paragraph of 35 U.S.C. § 112 requires that there be some
reasonable correlation between the scope of the claims and the
scope of enablement described in the specification.
In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970).
However, it has been consistently held that the first
paragraph of 35 U.S.C. § 112 requires nothing more than
objective enablement. In re Marzocchi, 439 F.2d 220, 223, 169
USPQ 367, 369 (CCPA 1971).
In meeting the enablement requirement, an application
need not teach, and preferably omits, that which is well-known
in the art. Hybritech Inc. v. Monoclonal Antibodies, Inc.,
802 F.2d 1367, 1384, 231 USPQ 81, 94 (CCPA 1986), cert.
denied, 480 U.S. 947 (1987). How such a teaching is set
forth, whether by the use of illustrative examples or by broad
descriptive terminology, is of no importance since a
specification which teaches how to make and use the invention
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