Appeal No. 1999-2330
Application No. 08/219,200
While we find our decision in this case has been made difficult by the failure of
appellants to specifically address the references which the examiner has cited in
support of lack of enablement, we find merit in appellants' position that Lenschow is
supportive of enablement of the pending claims. The rejection of the claims for lack of
enablement is reversed.
35 U.S.C. § 112, first and second paragraphs
Claims 79-94 stand rejected under 35 U.S.C. § 112, first paragraph and second
paragraph for failing to define the invention in a manner as to enable any person skilled
in the art to make and use the invention and for failing to point out and distinctly claim
the invention.
As set forth in Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200,
1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991):
The statute requires that “[t]he specification shall conclude with one or
more claims particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.” A decision as to
whether a claim is invalid under this provision requires a determination
whether those skilled in the art would understand what is claimed. See
Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624,
225 USPQ 634, 641 (Fed. Cir. 1985) (Claims must “reasonably apprise
those skilled in the art” as to their scope and be “as precise as the subject
matter permits.”).
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