Appeal No. 1999-1855
Application 08/738,916
"The test of enablement is whether one reasonably skilled
in the art could make or use the invention from the
disclosures in the patent coupled with information known in
the art without undue experimentation." United States v.
Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223
(Fed. Cir. 1988) (citing Hybritech, Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed.
Cir. 1986)). A patent need not teach, and preferably omits,
what is well known in the art. Paperless Accounting, Inc. v.
Bay Area Rapid Transit System, 804 F.2d 659, 664,
231 USPQ 649, 652 (Fed. Cir. 1986). The U.S. Patent and
Trademark Office must support a rejection for lack of
enablement with reasons. In re Marzocchi, 439 F.2d 220,
223-24, 169 USPQ 367, 369-70 (CCPA 1971).
The Examiner's position is as follows (EA5):
The specification fails to enable how the circuit
can use a "switching means formed in a semiconductor
device having a p-type substrate with n-type wells", as
recited in the claims. As discussed above, page 4 [sic,
3] [of the specification] makes it clear that the prior
art circuit of Fig. 3 has a problem operating when switch
S8 is an "n-channel transistor", which the specification
somehow relates [to] a structure "formed in a
semiconductor device having a p-type substrate with
n-type wells". It is clear that switch S11 of the
claimed invention shown in Fig. 4 similarly cannot be an
"n-channel transistor". With this structure, it is clear
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