Ex parte DISCHLER - Page 7




          Appeal No. 1997-0529                                       Page 7           
          Application No. 08/573,884                                                  


               An analysis of whether the claims under appeal are                     
          supported by an enabling disclosure requires a determination                
          of whether that disclosure contained sufficient information                 
          regarding the subject matter of the appealed claims as to                   
          enable one skilled in the pertinent art to make and use the                 
          claimed invention.  The test for enablement is whether one                  
          skilled in the art could make and use the claimed invention                 
          from the disclosure coupled with information known in the art               
          without undue experimentation.  See United States v.                        
          Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223                  
          (Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re                
          Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).               


               In order to make a rejection, the examiner has the                     
          initial burden to establish a reasonable basis to question the              
          enablement provided for the claimed invention.  See In re                   
          Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.                  
          Cir. 1993) (examiner must provide a reasonable explanation as               
          to why the scope of protection provided by a claim is not                   
          adequately enabled by the disclosure).  A disclosure which                  
          contains a teaching of the manner and process of making and                 







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