Appeal No. 1998-0488
Application No. 08/496,234
recitations of the claimed invention are primarily implemented
in the very same manner as set forth in the disclosures of the
applied prior art references. Appellant has also submitted
two declarations in support of his position that the present
specification is enabling for the claimed invention. The
examiner has found all of appellant’s arguments and evidence
to be unpersuasive of enablement.
To comply with the enablement clause of the first
paragraph of 35 U.S.C. § 112, the disclosure must provide an
adequate description such that the artisan could practice the
claimed invention without undue experimentation. In re
Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 303 (CCPA 1974);
In re Brandstadter, 484 F.2d 1395, 1407, 179 USPQ 286, 295
(CCPA 1973). The burden is initially upon the examiner to
establish a reasonable basis for questioning the sufficiency
of the disclosure. In re Strahilevitz, 668 F.2d 1229, 1232,
212 USPQ 561, 563 (CCPA 1982). Enablement is not precluded by
the necessity for some experimentation. However,
experimentation needed to practice the invention must not be
undue experimentation. The key word is "undue", not
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