Appeal No. 2003-0405 Page 4
Application No. 09/635,183
The test for enablement is whether one skilled in the art could make and use the
claimed invention from the disclosure coupled with information known in the art without
undue experimentation. See United States v. Telectronics, Inc., 857 F.2d 778, 785, 8
USPQ2d 1217, 1223 (Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re
Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
Thus, the dispositive issue is whether the appellants' disclosure, considering the
level of ordinary skill in the art as of the date of the appellants' application, would have
enabled a person of such skill to make and use the appellants' invention without undue
experimentation. The threshold step in resolving this issue is to determine whether the
examiner has met his burden of proof by advancing acceptable reasoning inconsistent
with enablement.2 This the examiner has not done.
The examiner's basis for this rejection (answer, pp. 3 and 6) is that dependent
claim 3 recites limitations directed only towards the embodiment of Figure 1 while
parent claim 2 is readable only on the embodiments of Figures 2-5. However, the
examiner has not explained, even if this were true, why an enablement rejection is
proper.
2 See In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971).
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