Appeal No. 95-0761
Application 08/050,511
inadequate written description.
A specification complies with the 35 U.S.C. § 112, first paragraph, enablement
requirement if it allows those of ordinary skill in the art to make and use the claimed invention
without undue experimentation. See In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993); Atlas Powder Co. v. E. I. du Pont De Nemours & Co., 750 F.2d 1569, 1576,
224 USPQ 409, 413 (Fed. Cir. 1984). As stated by the court in Wright, 999 F.2d at 1561-62, 27
USPQ2d at 1513:
Nothing more than objective enablement is required, and therefore it is irrelevant
whether this teaching is provided through broad terminology or illustrative
examples. [citation omitted]
When rejecting a claim under the enablement requirement of section 112,
the PTO bears an initial burden of setting forth a reasonable explanation as to why
it believes that the scope of protection provided by that claim is not adequately
enabled by the description of the invention provided in the specification of the
application; this includes, of course, providing sufficient reasons for doubting any
assertions in the specification as to the scope of enablement. If the PTO meets this
burden, the burden then shifts to the applicant to provide suitable proofs indicating
that the specification is indeed enabling.
The examiner’s statements that appellant’ specification does not disclose information and
selection criteria for the pigmented adhesive do not constitute a reasonable explanation as to why
the scope of protection provided by appellant’s claims is not enabled by appellant’s specification.
The examiner has provided no evidence or reasoning which shows that one of ordinary skill in the
art, given appellant’s original disclosure, would not have been able to practice appellant’s claimed
invention without undue experimentation. Hence, we conclude that the examiner has not carried
his burden of establishing a prima facie case of lack of enablement.
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