Appeal No. 2005-0855 4
Application No. 10/269,807
DISCUSSION
I. Preliminary matter
In the supplemental brief (see pages 3, 4 and 17) and second
answer (see pages 11 and 12), the appellant and the examiner
debate the propriety of the Office action which reopened
prosecution subsequent to appeal. As this matter is not directly
connected with the merits of any issue 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, rejection
The dispositive issue with respect to the enablement
requirement of 35 U.S.C. § 112, first paragraph, is whether the
appellant's 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
1(...continued)
which was set forth in the Office action but not restated in the
second answer (see Ex parte Emm, 118 USPQ 180, 181 (Bd. App.
1957)).
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