Appeal No. 2004-2355
Application No. 09/935,721 Page 6
factual inquiries. See In re Wands, 858 F.2d 731, 736-37,
8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Here, the examiner has not
presented sufficient factual determinations to support the legal
conclusion that undue experimentation is required to practice the
invention as claimed. We note that compliance with the
enablement provision of 35 U.S.C. § 112, first paragraph does not
require appellant to actually have reduced the claimed invention
to practice.
Accordingly, based on the present record, the rejection of
claims 1-6 and 12-15 and the rejection of claims 10 and 11, each
under 35 U.S.C. § 112, first paragraph, for lack of enablement
cannot be sustained.
The Rejection for Lack of Descriptive Support
The examiner has rejected claims 1-6 and 10-14 as not being
“described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor(s),
at the time the application was filed, had possession of the
claimed invention” (answer, page 4).
The examiner has stated that descriptive support in the
original disclosure could not be found because the teaching in
the detailed portion of the specification “does not support the
claimed materials, where the amounts are not given and the
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