Appeal No. 2002-0652
Application No. 08/465,072
experimentation. The examiner asserts (Answer, page 24) that
appellant has presented a non-enabling disclosure because the
various elements discussed in the disclosure are not discussed
together in "any single embodiment of the specification or shown
in any Figure." The examiner further explains (Answer, page 24):
The rejected claims are directed to systems with
individual elements that operate together (as an
example, see claim 105 . . .). This is shown by the
claim recitations directed to interconnections and
interrelations between the claimed elements . . . that
is not supported or described in the originally filed
specification. The specification does not contain any
disclosure directed to the combination of elements,
represented by these claimed interconnections and
interrelations. The original specification does not
disclose or enable the complete systems that are now
being claimed. . . . The specification, at best,
simply mentions some of the claimed words (or
variations thereof) without providing any actual
disclosure as to how the elements are to be constructed
or how the elements are to be used or how they
function, in combination with one another or
individually.
In other words, "[t]he interconnections and interactions of the
claimed components to perform the claimed functions in
combination is lacking from Appellant's specification" (Answer,
page 25).
"The test of enablement is whether one reasonably skilled in
the art could make or use the invention from the disclosures in
the patent coupled with information known in the art without
undue experimentation." United States v. Telectronics, Inc. ,
857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988). The
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