Ex parte KOSLEY JR. et al. - Page 10




          Appeal No. 1997-2188                                                        
          Application 08/137,440                                                      
          (CCPA 1971). Moreover, in determining whether or not a                      
          disclosure is enabling, it has been consistently held that the              
          enablement requirement of the first paragraph of 35 U.S.C.                 
          112 requires nothing more than objective enablement.  In re                 
          Marzocchi, 439 F.2d at 223, 169 USPQ at 369. 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 (Fed. Cir. 1986).                                     
               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 in terms which correspond in scope               
          to the claims must be taken as complying with the first                     
          paragraph of 35 U.S.C.  112 unless there is reason to doubt                
          the objective truth of the statements relied upon therein for               
          enabling support.  Marzocchi at 439 F.2d 223, 169 USPQ 369.  A              
          specification is considered to be enabling if a person of                   
          ordinary skill in the art could "make and use" the claimed                  
          invention without resort to "undue experimentation".  In re                 
          Borkowski, 422 F.2d 904, 908, 164 USPQ 642, 645 (CCPA 1970).                
               "Whether making and using an invention would have                      
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