Appeal No. 2002-0283
Application 09/328,918
In this instance, for the reasons expressed above, we are in
agreement with appellant’s position that the disclosure as
originally filed would have clearly conveyed to those skilled in
the art that appellant had invented the subject matter now
claimed. Accordingly, the examiner’s rejection of claims 12, 17,
20 through 24 and 29 through 38 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description
requirement will not be sustained.
We next consider the examiner’s rejection of Claims 12, 17,
20 through 24 and 29 through 38 under 35 U.S.C. § 112, first
paragraph, as being based on a non-enabling disclosure. It is by
now well-established law that the test for compliance with the
enablement requirement in the first paragraph of 35 U.S.C. § 112
is whether the disclosure, as filed, is sufficiently complete to
enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation. In re Moore,
439 F.2d 1232, 1235, 169 USPQ 236, 238-39 (CCPA 1971). See also
In re Scarborough, 500 F.2d 560, 566, 182 USPQ 298, 302-03 (CCPA
1974). Moreover, in rejecting a claim for lack of enablement, it
is also well settled that the examiner has the initial burden of
advancing acceptable reasoning inconsistent with enablement in
order to substantiate the rejection. See In re Strahilevitz, 668
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