Appeal No. 2002-0283
Application 09/328,918
examiner as to exactly why this embodiment of the invention would
be beyond the capability of one of ordinary skill in the art
(i.e., would require undue experimentation) given a full
consideration of appellant’s disclosure. It appears from the
record that the examiner’s position is again based on the
mistaken belief that the examiner need not consider the entire
specification when determining whether every feature of the
claims on appeal is adequately described to enable the artisan to
make and use the invention.
After a careful consideration of appellant’s disclosure and
of the arguments on both sides, it is our opinion that the level
of skill in this art is sufficiently high that the ordinarily
skilled artisan would have been able to make and use appellant’s
claimed invention as set forth in the claims before us on appeal,
based on appellant’s disclosure, without the exercise of undue
experimentation.
For the above reasons, we will not sustain 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.
With respect to the examiner’s rejection of claims 12, 17,
20 through 24 and 29 through 38 under 35 U.S.C. § 112, second
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