Appeal No. 1997-4395
Application No. 08/351,044
and 2 as to the same issue. The final rejection and answer in
this application maintains the view that the present claims on
appeal
do not satisfy the enablement portion of the first paragraph
of 35 U.S.C. § 112 because, in the examiner's view, the "Board
of Appeals found that the entire specification was not
enabling for any detection, no matter how claimed, of
subsequent skips." (Answer page 4.) Thus, the sole issue in
this appeal is whether the present claims on appeal satisfy
the enablement requirement of the first paragraph of 35 U.S.C.
§ 112.
Rather than repeat the positions of the examiner and the
appellants, reference is made to the briefs, the Declaration
of Ronald Coppersmith and the answer for the details thereof.
OPINION
As to the enablement issue, the specification must teach
those skilled in the art how to make and use the claimed
invention without undue experimentation. Genentech, Inc. v.
Nordisk A/S, 108 F.3d 1361, 1365, 42 USPQ2d 1001, 1004 (Fed.
Cir. 1997), cert. denied, 118 S. Ct. 397 (1997). This same
case indicates that the scope of the claims must bear a
3
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