Appeal No. 1997-0106
Application 07/792,482
(to be enabling, a specification must teach those skilled in
the art how to make and use the full scope of the claimed
invention without "undue experimentation"). Therefore, the
examiner's statement fails to rise to the level of a
"reasonable explanation" as to why the claims are not
adequately enabled by the description of the invention
provided in the specification.
Based on the record before us, the examiner has failed to
satisfy his initial burden. For this reason, the rejection of
claims 36-39, 44-47, 49-58, 60, 61, 63, 66-68 and 70 under 35
U.S.C. § 112, first paragraph, based on enablement, is
reversed.
2. Written description
Claims 36-39, 44-47, 49-58, 60, 61, 63, 66-68 and 70 are
also rejected under 35 U.S.C. § 112, first paragraph, based on
written description. According to the examiner, the
specification, as originally filed, fails to provide
descriptive support for the phrase "in the absence of a
photoimaging step" recited in subparagraphs (b) and (g) of
claims 36, 56 and 66. See Answer, pp. 4-5.
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