Appeal No. 2001-1193
Application No. 08/463,761
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); In re Stephens, 529 F.2d 1343, 1345,
188 USPQ 659, 661 (CCPA 1976).
In order to make a 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
describing and defining the subject matter sought to be patented
must be taken as being in compliance with the enablement
requirement of 35 U.S.C. § 112, first paragraph, unless there
is a reason to doubt the objective truth of the statements
contained therein which must be relied on for enabling support.
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