Appeal No. 2001-2204
Application No. 09/155,413
OPINION
In reaching our conclusion on the enablement issue raised in
this appeal, this panel of the board has carefully considered
appellant's specification and claims,3 appendices II, III, and
IV attached to the main brief, and the respective viewpoints of
appellant and the examiner. As a consequence of our review, we
make the determination which follows.
We do not sustain the examiner's rejection under 35 U.S.C.
§ 112, first paragraph.
The test regarding enablement is whether a disclosure, as
filed, is sufficiently complete to enable one of ordinary skill
in the art to make and use a claimed invention without undue
experimentation. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988) and In re Scarbrough, 500 F.2d 560,
566, 182 USPQ 298, 302 (CCPA 1974). An examiner has the initial
burden of producing reasons that substantiate a rejection based
3 The following informalities in the claims should be
addressed by the examiner. In claims 12 and 23, clause e) is not
grammatically sound. In claim 13, line 2, "data recorded" in
step c) has no express antecedent basis in parent claim 12. Claim
18, line 1, step "d)" should apparently be step "e)."
3
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