Appeal No. 2006-0911 Παγε 4
Application No. 09/248,595
compliance with the enablement requirement. In the answer, however, the examiner
concluded that the first problem amounted to non-compliance with the enablement
requirement while the second amounted to non-compliance with the written description
requirement. In any event, for the reasons which follow, we conclude that the issues
raised by the examiner amount to neither an enablement problem nor a written
description problem.
Insofar as the enablement requirement is concerned, the dispositive issue is
whether the appellants' disclosure, considering the level of ordinary skill in the art as of
the date of the appellants' application, would have enabled a person of such skill to
make and use the appellants' invention without undue experimentation. In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563-64 (CCPA 1982). In calling into
question the enablement of the appellants' disclosure, the examiner has the initial
burden of advancing acceptable reasoning inconsistent with enablement. Id.
The written description requirement serves "to ensure that the inventor had
possession, as of the filing date of the application relied on, of the specific subject
matter later claimed by him; how the specification accomplishes this is not material." In
re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). In order to meet the
written description requirement, the appellants do not have to utilize any particular form
of disclosure to describe the subject matter claimed, but "the description must clearly
allow persons of ordinary skill in the art to recognize that [he or she] invented what is
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