Appeal No. 1998-2010
Application No. 08/542,861
instant case is similar to Lund, previously cited in which the Court agreed the
specific aldehyde reactants mentioned in the specification fell within the
claimed range and thus far short of the claim's scope.
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 the present case,
the examiner appears to acknowledge the patent and general reference material provided
by appellants, but fails to establish with specific argument why one of ordinary skill in the
art, coupling the knowledge in the art provided by appellants and the teachings of the
specification, would not be able to make compounds within the claim scope. Nor has the
examiner indicated why the examples provided in the specification are not representative
of the claimed subject matter, as a whole.
In view of the above, we find the examiner has failed to provide a prima facie case
of lack of enablement based on how to make the compounds of the claimed invention.
How to Use
Secondly, the examiner argues the specification fails to teach how to use the
invention within the claim scope. The examiner also argues that there is no reasonable
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007