Appeal No. 2005-0215
Application No. 09/666,301
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). On the other hand,
the test for enablement under the first paragraph of 35 U.S.C.
§ 112 is whether one reasonably skilled in the art could make or
use the claimed invention from the disclosed subject matter
together with information in the art without undue
experimentation. United States v. Telectronics, Inc., 857 F.2d
778, 785, 8 USPQ2d 1217, 1222-23 (Fed. Cir. 1988), cert. denied,
490 U.S. 1046 (1989). A disclosure can be enabling even though
some experimentation is necessary. Hybritech, Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384-85, 231 USPQ 81, 94 (Fed.
Cir. 1986), cert. denied, 480 U.S. 947 (1987).
Both of the rejections of record are reversed because of:
(1) the lack of clarity as to what portion or portions of the
grounds of rejection apply to the two distinctly different
portions of the first paragraph of 35 U.S.C. § 112; and (2) the
grounds of rejection failed to take into consideration the
circuit in Figure 2 of the originally filed drawing, the overall
explanation of the invention at page 3, lines 16 through 24 of
the originally filed disclosure, the explanation of the Figure
2 circuit in the paragraph bridging pages 9 and 10 of the
originally filed disclosure, and the originally filed claims
which clearly explain to the skilled artisan that the additional
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