Appeal No. 1999-1651
Application No. 08/775,308
basis for the rejection in the final rejection or in the answer. Therefore, we limit our
review solely to enablement under 35 U.S.C. § 112, first paragraph.
While we agree with the examiner that the specification, as filed, does not
shimmer with clarity as to assist the examiner in evaluating whether appellants had
complied with any or all three portions of 35 U.S.C. § 112, first paragraph, we find that
the examiner has not established a prima facie case of a lack of enablement. We find
that the specification is quite sparse in its written description of the packaging of the
circuits disclosed throughout the specification, but when taken in combination with the
drawings (especially Fig. 23), the brief description of the figures section of the
disclosure and appellants’ identification of support, it is our reasoned opinion that the
disclosure, as originally filed, would have been sufficient to enable one skilled in the art
to make and use the claimed invention. In essence, the claimed invention is not an
overly specific claimed invention nor highly technical invention which would have
required a great deal of detailed disclosure, and the skilled artisan would merely have to
look to the language of the claims to enable a physical orientation and configuration
of elements in the claimed manner to practice the invention. But, the rejection is based
upon a lack of support in the disclosure which underlies the claimed invention. Here,
the originally filed disclosure includes both the written description and the drawings
which must enable the skilled artisan to make and/or use the claimed invention.
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