Appeal No. 1998-2841
Application No. 08/463,282
Claims 1-3 stand rejected under 35 U.S.C. § 112, first paragraph, for failing to
provide an enabling disclosure.2
We refer to the Final Rejection (Paper No. 4) and the Examiner's Answer (Paper
No. 16) for a statement of the examiner's position and to the Brief (Paper No. 15) and the
Reply Brief (Paper No. 17) for appellant’s position with respect to the claims which stand
rejected.
OPINION
Before turning to the instant rejection of claims 1-3 under 35 U.S.C. § 112, first
paragraph, we briefly review the requirements of the statute with respect to providing an
enabling disclosure.
The first paragraph of 35 U.S.C. 112 requires, inter alia, that the
specification of a patent enable any person skilled in the art to which it
pertains to make and use the claimed invention. Although the statute does
not say so, enablement requires that the specification teach those in the art
to make and use the invention without ‘undue experimentation.’ In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). That some
experimentation may be required is not fatal; the issue is whether the amount
of experimentation required is ‘undue.’ Id. at 736-37, 8 USPQ2d at 1404.
In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991).
2The Final Rejection, at page 2, also sets forth a rejection of claim 3 under 35 U.S.C. § 112,
second paragraph. The rejection for indefiniteness has been withdrawn by the examiner upon entry of the
amendment after final filed April 22, 1997 (Paper No. 5). However, the appendix of claims submitted with
the Brief does not reflect the noted amendment to claim 3.
-3-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007