Appeal No. 2006-1544
Application 10/024,621
Rather than reiterate the examiner's full statement of the
above-noted rejections and the conflicting viewpoints advanced by
the examiner and appellants regarding those rejections, we make
reference to the answer (mailed October 21, 2005) for the examiner's
reasoning in support of the rejections, and to appellants’ brief
(filed August 1, 2005) and reply brief (filed December 21, 2005) for
the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to appellants’ specification and claims, to the
applied prior art references, and to the respective positions
articulated by appellants and the examiner. As a consequence of our
review, we have made the determinations which follow.
We turn first to the examiner's rejection of claims 1 through
69 under 35 U.S.C. § 112, first paragraph, as being based on a non-
enabling disclosure. 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.
See, In re Moore, 439 F.2d 1232; 169 USPQ 236 (CCPA 1971). Note
also, In re Scarbrough, 500 F.2d 560, 182 USPQ 298 (CCPA 1974) and
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
3
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