Appeal No. 2001-2168
Application No. 09/083,307
not satisfy the description requirement in the first
paragraph of § 112. See In re Kaslow, 707 F.2d 1366, 1375,
217 USPQ 1089, 1096 (Fed. Cir. 1983).
With regard to the new ground of rejection of claims
10-15, 17 and 23 under the first paragraph of § 112, the
dispositive issue with regard to the enablement requirement
is whether an applicant’s disclosure, considering the level
of ordinary skill in the art as of the date of the
applicant’s application, would have enabled a person of
such skill to make and use the claimed invention without
undue experimentation. In re Strahilevitz, 668 F.2d 1229,
1232, 212 USPQ 561, 563 (CCPA 1982). This test is not met
for enabling one of ordinary skill in the art to
incorporate radiation per se (i.e., radiant energy in the
form of rays) into a kit for later use in the treatment of
a patient.
In summary, the examiner’s decision to reject claims
1-4, 8, 9, 16, 18-20 and 22 as unpatentable over Lentz is
affirmed, the examiner’s decision to reject claim 21 as
unpatentable over Lentz in view of Okarma is affirmed, the
examiner’s decision to reject claim 7 as unpatentable over
Lentz in view of Chen is affirmed, the examiner’s decision
to reject claims 5, 6, 10-15, 17 and 23 as unpatentable
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