Appeal No. 2002-0113
Application 08/799,923
I. The 35 U.S.C. § 112, first paragraph (enablement) rejection
of claims 16-20
On page 5 of the answer, the examiner states that the
numerical technique recited in claims 16-20 is not adequately
disclosed. The examiner states the discussion on page 7 of
appellants’ specification refers to a finite-element method (FEM)
analysis, but gives no specific details as to how the analysis is
applied to cathodic protection current distribution modeling.
On page 9 of the brief, appellants argue that the FEM
analysis is a well known numerical technique, and they refer to
The McGraw-Hill Dictionary of Scientific and Technical Terms for
the definition of finite-element method analysis. Appellants
also state that the FEM analysis is explained on page 7 of the
specification and can be done without undue experimentation such
that actual steps are not required to be set forth to meet the
requirements of § 112, first paragraph.
We note that the first paragraph of 35 U.S.C. § 112, with
regard to enablement, requires that the specification enable a
person having ordinary skill in the art to make and use the
claimed invention. Also, enablement requires that the
specification teach those having ordinary skill in the art to
make and use the invention without “undue experimentation.”
In re Vaeck, 947 F.2d 488, 495-96, 20 USPQ2d 1438, 1444-45 (Fed.
Cir. 1991).
Also, it is well settled that the examiner has the burden of
providing a reasonable explanation, supported by the record as a
whole, why the assertions as to the scope of objective enablement
set forth in the specification are in doubt, including reasons
why the description of the invention in the specification would
not have enabled one of ordinary skill in this art to practice
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