Appeal No. 2001-0342 Page 8
Application No. 08/677,707
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).
In order to make a nonenablement rejection, the examiner
has the initial burden to establish a reasonable basis to
question the enablement provided for the claimed invention.
See In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993) (examiner must provide a reasonable
explanation as to why the scope of protection provided by a
claim is not adequately enabled by the disclosure).
Thus, the first issue in an enablement rejection 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
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