Appeal No. 2001-0688
Application No. 08/689,721 Page 5
invention." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64,
19 USPQ2d 1111, 1117 (Fed. Cir. 1991). An analysis of whether
the claims under appeal are supported by an enabling disclosure
requires a determination of whether that disclosure contained
sufficient information regarding the subject matter of the
appealed claims as to enable one skilled in the pertinent art to
make and use the claimed invention. 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 order to make a nonenablement rejection, the examiner has
the initial burden to establish a reasonable basis to question
the enablement provided for the claimed invention. See In re
Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993) (examiner must provide a reasonable explanation as to why
the scope of protection provided by a claim is not adequately
enabled by the disclosure). A disclosure which contains a
teaching of the manner and process of making and using an
invention in terms which correspond in scope to those used in
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