Appeal No. 2004-0576 Page 3
Application No. 10/087,374
of the rejection, and to the brief (Paper No. 9, filed April 8, 2003) and reply brief2 (Paper
No. 11, filed July 23, 2003) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants' specification and claims, and to the respective positions articulated by
the appellants and the examiner. As a consequence of our review, we make the
determinations which follow.
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).
2 The declaration of Ian Alexander Millar attached to the reply brief was held by the examiner as
being untimely (see Paper No. 12, mailed October 14, 2003). Accordingly, we will not consider that
declaration.
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