Appeal Number: 2006-3054
Application Number: 10/672,625
Phoenix does not disclose a source of electrical power for use in actuating
the brake component.
PRINCIPLES OF LAW
An analysis of whether the claims under appeal are supported by an
enabling disclosure requires a determination of whether that disclosure contained
sufficient information regarding the subject matter of the appealed claims as to
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
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