Ex parte DEWEY - Page 6




          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                        


                                          6                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007