Appeal No. 2005-1510
Application No. 09/883,279
determined at this time, the scope of claim 2
is also unable to be determined as well”
(answer, page 3).
As a further explanation, in the paragraph bridging pages 5
and 6 of the answer, the examiner has made the determination that
the term “switching states” as used in the claims on appeal
“apply to the overall control system (reference numeral 7) and
not to the position of the switch as asserted by appellant.”
It is by now well-established law that the test for
compliance with the enablement requirement in the first paragraph
of 35 U.S.C. § 112 is whether the disclosure, as filed, is
sufficiently complete to enable one of ordinary skill in
the art to make and use the claimed invention without undue
experimentation. In re Moore, 439 F.2d 1232; 169 USPQ 236 (CCPA
1971). See also In re Scarborough, 500 F.2d 560, 182 USPQ 298
(CCPA 1974). Moreover, in rejecting a claim for lack of
enablement, it is also well settled that the examiner has the
initial burden of advancing acceptable reasoning inconsistent
with enablement in order to substantiate the rejection. See In
re Strahilevitz, 668 F.2d 1229, 212 USPQ 561 (CCPA 1982); In re
Marzocchi, 439 F.2d 220, 169 USPQ 367 (CCPA 1971). Once this is
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007