Appeal No. 96-2941
Application 07/903,353
the scope of the appealed claims which do not limit the lower
magnetic layer to those having a thickness of 2.5 µm or higher.
It is well settled that the examiner has the initial burden
of establishing lack of enablement by compelling reasoning or
objective evidence. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563 (CCPA 1982); In re Armbruster, 512 F.2d 676, 677,
185 USPQ 152, 153 (CCPA 1975); In re Marzocchi, 439 F.2d 220,
223-24, 169 USPQ 367, 369-70 (CCPA 1971). In the present case,
as urged by appellants, the patented specification expressly
discloses that when the lower magnetic layer is thinner than
2.5 µm, the lower layer contributes less to the improvement of
electroconductivity and, therefore, the thickness of the lower
magnetic layer is preferably 2.5 µm or higher (column 4, lines
53-56). On the other hand, the examiner has merely pointed out
other portions of the specification which indicate that a
thickness of 2.5 µm or higher for the lower magnetic layer is
part of the present invention, which, of course, is true.
However, when such portions relied upon by the examiner are read
in context with the disclosure at column 4, lines 53-56, the
inescapable conclusion, absent compelling reasoning or objective
evidence to the contrary, is that, prima facie, the present
specification enables recording mediums wherein the lower
magnetic layer is less than 2.5 µm.
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