Appeal No. 1997-2528
Application No. 07/810,908
Grouping of Claims
Appellants submit that claims 44-46 stand or fall together. Brief, page 2.
Therefore, we decide this appeal on the basis of claim 44 as representative of claims
44-46. 37 CFR § 1.192(c)(7)(1996).
DISCUSSION
In reaching our decision in this appeal, we have given consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the noted rejection, we make reference to the examiner's
Answer for the examiner's reasoning in support of the rejection, and to the appellants’
Brief for the appellants’ arguments thereagainst. As a consequence of our review, we
make the determinations which follow.
35 U.S.C. § 112, first paragraph
Claims 44-46 stand rejected under 35 U.S.C. § 112, first paragraph for lack of
enablement.
"To be enabling, the specification of a patent must teach those skilled in the art
how to make and use the full scope of the claimed invention without 'undue
experimentation.'" [Emphasis added.] Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d
1361, 1365, 42 USPQ2d 1001, 1004 (Fed. Cir.1997) (quoting In re Wright, 999 F.2d
1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)). Conversely, the first paragraph
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