Appeal No. 1998-1024
Application 08/511,703
Claims 1-10 stand rejected under 35 U.S.C. § 112, first paragraph, as containing subject
matter which was not described in the specification in such a way as to enable one skilled in the art to
which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 1-10 stand further rejected under 35 U.S.C. § 103 as being unpatentable over Tappert
in view of each of Rodi and Mamberer.
Rather than attempt to reiterate the examiner’s full commentary with regard to the above noted
rejections and conflicting viewpoints advanced by the examiner and appellants regarding the rejections,
we make reference to the final rejection (Paper No. 5, mailed September 13, 1996) and the examiner’s
answer (Paper No. 12, mailed April 24, 1997) for the reasoning in support of the rejections, and to
appellants’ brief (Paper No. 10, received January 16, 1997) and the reply brief (Paper No. 13,
received June 2, 1997).
OPINION
We turn first to the examiner’s rejection of appealed claims 1-10 under 35 U.S.C. § 112, first
paragraph, which rejection we understand to be based upon the enablement requirement of the first
paragraph of section 112.
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,
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