Appeal No. 2004-0921
Application No. 09/472,134
DISCUSSION
I. Preliminary matter
The appellants raise as an issue in the appeal the refusal
of the examiner to enter certain drawing corrections proposed
during the prosecution of the application (see page 13 in the
main brief). As this matter is not directly connected with the
merits of issues involving a rejection of claims, it is
reviewable by petition to the Director rather than by appeal to
this Board (see In re Hengehold, 440 F.2d 1395, 1403-04, 169 USPQ
473, 479 (CCPA 1971)), and hence will not be further addressed in
this decision.
II. The 35 U.S.C. § 112, first paragraph, enablement rejection of
claims 1 through 49, 55, 57 through 60, 64 through 68, 73, 77
through 88, 90 and 92
The dispositive issue with respect to the enablement
requirement of 35 U.S.C. § 112, first paragraph, is whether the
appellants’ disclosure, considering the level of ordinary skill
in the art as of the date of the application, would have enabled
a person of such skill to make and use the claimed invention
without undue experimentation. In re Strahilevitz, 668 F.2d
1229, 1232, 212 USPQ 561, 563-64 (CCPA 1982). In calling into
question the enablement of the disclosure, the examiner has the
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