Appeal No. 1997-2026
Application 08/317,108
[brief, page 3], and present no separate arguments for any
individual claims. We take as representative claim 24, the
only independent claim in the case.
Rejections under 35 U.S.C. § 112
The Examiner has rejected claim 24 for lack of enablement
and also for failing to particularly point out and distinctly
claim the subject matter of the invention [answer, page 3].
The Examiner contends [id. 3] that “[t]he preamble of
independent claim 24 requires the formation of a
microelectronic capacitor structure ... but the recited
process steps specify no such integrated circuit and therefore
it is unclear where same is introduced.”
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).
Thus, the dispositive issue is whether Appellants’
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