Appeal No. 1999-0445
Application No. 08/351,583
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims and to the respective positions articulated by the appellant
and the examiner. For the reasons which follow, we shall not sustain the examiner's rejection.
The examiner's position in rejecting the claims appears to be that the appellant's6
specification fails to comply with both the written description and enablement requirements of
the first paragraph of 35 U.S.C. § 112 in regard to the claimed subject matter. Accordingly,
this panel has reviewed the appellant's claims and underlying disclosure to determine whether
each of these requirements has been met.
The enablement requirement
Insofar as the enablement requirement is concerned, the dispositive issue is whether the
appellant’s disclosure, considering the level of ordinary skill in the art as of the date of the appellant’s
application, would have enabled a person of such skill to make and use the appellant’s invention
without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563-64
(CCPA 1982). In calling into question the enablement of the appellant’s disclosure, the examiner has
the initial burden of advancing acceptable reasoning inconsistent with enablement. Id.
6In the first rejection (Paper No. 4, page 4), the examiner indicated that, in addition to failing to provide
an adequate written description of the invention and failing to teach how to make and/or use the invention, the
appellant's specification as originally filed did not provide support for the invention as claimed. This third basis
appears to us to have been a clear articulation of a lack of written description rejection. It is not clear whether the
examiner's withdrawal of this third basis of rejection in the final rejection (Paper No. 10, page 2), after the
appellant amended the specification to indicate its continuation-in-part status and filed a declaration for a
continuation-in-part application, stems from a recognition that the third basis was simply repetitive of the lack of
written description basis or from a determination that the specification as originally filed does provide support for
the claimed subject matter.
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