Appeal No. 2003-1268 Page 4
Application No. 09/706,566
lack of antecedent basis referenced by the examiner in independent claims 19 and 23
and submits that a simple amendment can correct these informalities. Accordingly, we
summarily sustain the rejection of claims 19 to 24 under 35 U.S.C. § 112, second
paragraph.
With respect to the examiner's rationale as to why claims 9 to 18 were indefinite,
we find ourselves in total agreement with the appellant (brief, p. 10; reply brief, pp. 6-7)
that these claims define the metes and bounds thereof with a reasonable degree of
precision and particularity as required by the second paragraph of 35 U.S.C. § 112.
Accordingly, we will not sustain the rejection of claims 9 to 18 under 35 U.S.C. § 112,
second paragraph.
The enablement rejection
We will not sustain the rejection of claims 9 to 24 under 35 U.S.C. § 112, first
paragraph.
An analysis of whether the claims under appeal are supported by an enabling
disclosure requires a determination of whether that disclosure contained sufficient
information regarding the subject matter of the appealed claims as to enable one skilled
in the pertinent art to make and use the claimed invention. The test for enablement is
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