Appeal No. 2002-0001
Application No. 08/989,674
Rather than repeat the positions of appellants and the
examiner, reference is made to the briefs and to the final
rejection and answer for the respective details thereof.
OPINION
We turn first to the rejection of certain claims under the
enablement portion of the first paragraph of 35 U.S.C. § 112.
Notwithstanding the examiner’s assertions at page 4 of the answer
that all claims on appeal, claims 1 through 12, stand rejected
under this portion of 35 U.S.C. § 112, page 2 of the final
rejection, from which appellants have appealed, maintains only
the rejection of claims 5 through 8 and indicated that the
rejection of claims 1 through 4 and 9 through 12 had been
withdrawn.
As to the enablement issue, the specification of the patent
must teach those skilled in the art how to make and use the
claimed invention without undue experimentation. Genentech, Inc.
v. Novo Nordisk A/S, 108 F.3d 1361, 1365, 42 USPQ2d 1001, 1004
(Fed. Cir.), cert. denied, 118 S.Ct. 397 (1997). This same case
indicates that the scope of the claims must bear a reasonable
correlation to the scope of enablement provided by the
disclosure. Enablement is also not precluded even if some
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