Page 4
Appeal No. 1999-1814
Application No. 08/688,108
4. Claims 15, 17 and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over4
Chow in view of Agee.
Reference is made to the brief (Paper No. 8) and the answer (Paper No. 11) for the respective
positions of the appellant and the examiner with regard to the merits of these rejections.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the appellant's
specification and claims, to the applied prior art references, and to the respective positions articulated
by the appellant and the examiner. As a consequence of our review, we make the determinations
which follow.
The enablement rejection
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 appellant’s disclosure, the examiner has the
initial burden of advancing acceptable reasoning inconsistent with enablement. Id.
4It is clear from the record as a whole that the examiner's inclusion of claim 18, rather than claim 19, in this
rejection in the final rejection was an inadvertent error which was corrected in the examiner's answer. As appellant
has not petitioned the examiner's inclusion of claim 19 in this rejection in the answer as being a new ground of
rejection and in light of our treatment of this rejection, infra, our interpretation does not prejudice appellant.
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