Appeal No. 2004-0323 Page 5
Application No. 09/716,045
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
The enablement rejection
We will not sustain the rejection of claims 1 to 4 and 6 to 13 under 35 U.S.C.
§ 112, first paragraph, as containing subject matter which was not described in the
specification in such a way as to enable one skilled in the art to which it pertains, or with
which it is most nearly connected, to make and/or use the invention.
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
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).
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