Appeal No. 2001-2671 Page 7
Application No. 09/258,155
As to the rejection based on the enablement requirement,4
it is our view that the examiner has not met the initial
burden to establish a reasonable basis to question the
enablement provided for the claimed invention. A disclosure 5
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. 6
4The 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).
5See 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).
6As stated by the court in In re Marzocchi, 439 F.2d 220,
223, 224, 169 USPQ 367, 370 (CCPA 1971)
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