Appeal No. 1998-2337
Application 08/651,442
into the disclosure. Accordingly, an applicant’s duty to tell all that is necessary to make or use varies
greatly depending upon the art to which the invention pertains.” In re Howarth, 654 F.2d 103, 105,
210 USPQ 689, 691 (CCPA 1981). Here, the examiner has merely pointed out that “[t]he
specification does not appear to contain details of the extra potentiostatic control unit for compensating
ohmic drop” specified in claim 3 (answer, page 7; see also page 11), while appellants counters that
those in the art know “what a potentiostatic control unit is” and how it can be used (brief, page 11; see
also reply brief, page 3). We find that the examiner has not provided a reasonable explanation,
supported by the record as a whole, why the disclosure of the “extra potentiostatic control unit for
compensating for ohmic potential drop” in the specification (e.g., page 6, lines 2-13) would not provide
sufficient details of the claimed invention encompassed by claim 3 so as to enable one of ordinary skill in
this art to practice the claimed invention without undue experimentation, as appellants contend.
Accordingly, the examiner has not made out a prima facie case of nonenablement and thus we must
reverse this ground of rejection.
The examiner’s decision is reversed
REVERSED
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