Appeal No. 2001-0378 Page 8
Application No. 08/873,876
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 18 under 35 U.S.C. § 112,
second paragraph, is reversed.
The enablement rejection
We will not sustain the rejection of claims 1 to 18 under
35 U.S.C. § 112, first paragraph.
An analysis of whether the claims under appeal are
supported by an enabling disclosure requires a determination
of whether that disclosure contained 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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