Appeal No. 2001-0129
Application No. 09/035,655
OPINION
In reaching our decision in this appeal, we have give
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.
We turn first to the examiner’s rejection of claims 1
through 9 under 35 U.S.C. § 112, first paragraph. We
initially note that an analysis of whether the claims under
appeal are supported by an enabling disclosure requires a
determination of whether that disclosure contains sufficient
information regarding the subject matter of the appealed
claims as to enable one skilled in the pertinent art to make
and use the claimed invention. 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, 1223
(Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re
Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
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