Appeal No. 1998-3367
Application No. 08/545,717
Reference is made to appellants’ main and reply briefs
(Paper Nos. 15 and 18) and to the examiner’s answer (Paper No.
16) for the respective positions of appellants and the
examiner regarding the merits of these rejections.
The 35 U.S.C. § 112, first paragraph, rejection
The test for compliance with the enablement requirement
found in the first paragraph of 35 U.S.C. § 112 is whether the
disclosure, as filed, is sufficiently complete to enable one
of ordinary skill in the art to make and use the claimed
invention without undue experimentation. In re Wands, 858
F.2d 731, 737,
8 USPQ2d 1400, 1404 (Fed. Cir. 1988); In re Scarbrough, 500
F.2d 560, 566, 182 USPQ 298, 303 (CCPA 1974). The
experimentation required, in addition to not being undue, must
not require ingenuity beyond that expected of one of ordinary
skill in the art. See In re Angstadt, 537 F.2d 498, 504, 190
USPQ 214,
219 (CCPA 1976). The examiner has the initial burden of
producing reasons that substantiate a rejection based on lack
of enablement. In re Strahilevitz, 668 F.2d 1229, 1232, 212
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