Appeal No. 2006-0524 Παγε 4
Application No. 10/051,577
enable one skilled in the pertinent art to make and use the claimed invention. The test
for enablement is whether one skilled in the art could make and use the claimed
invention from the disclosure coupled with information known in the art without undue
experimentation. See United States v. Telectronics, Inc., 857 F.2d 778, 785,
8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re
Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
In order to make a rejection, the examiner has the initial burden to establish a
reasonable basis to question the enablement provided for the claimed invention. See In
re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner
must provide a reasonable explanation as to why the scope of protection provided by a
claim is not adequately enabled by the disclosure). A disclosure which contains a
teaching of the manner and process of making and using an invention in terms which
correspond in scope to those used in describing and defining the subject matter sought
to be patented must be taken as being in compliance with the enablement requirement of
35 U.S.C. § 112, first paragraph, unless there is a reason to doubt the objective truth of
the statements contained therein which must be relied on for enabling support.
Assuming that sufficient reason for such doubt exists, a rejection for failure to teach how
to make and/or use will be proper on that basis. See In re Marzocchi, 439 F.2d 220,
223, 169 USPQ 367, 369 (CCPA 1971). As stated by the court, "it is incumbent upon
the Patent Office, whenever a rejection on this basis is made, to explain why it doubts
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