Appeal No. 95-1872
Application 07/953,340
ordinary skill in the art to practice the instant invention. It is further noted that appellant
discloses that a micro sponge which is available commercially from Advanced Polymer
Systems, Inc. may be used as the polymeric sponge material, however the trademark
(here, the part number) has not been accompanied by the generic terminology.[3]
In rejecting the claims under 35 U.S.C. § 112, first paragraph, it is the examiner*s burden to
establish lack of enablement by compelling reasoning or objective evidence. In re Strahilevitz, 668 F.2d
1229, 1232, 212 USPO 561, 563 (CCPA 1982); In re Armbruster, 512 F.2d 676, 677, 185 USPQ
152, 153 (CCPA 1975). We find no such reasoning or evidence here. The examiner has neither
established by compelling reasoning nor by presentation of objective evidence that a person of ordinary
skill in this art would not have been able to practice the claimed invention without resort-ing to “undue”
experimentation. The examiner has not explained what generic terminology must accompany the part
number and why such information is necessary to enable one to practice the invention without undue
experimentation, what undue experimentation is necessary and why it is necessary that the chemical
composition of the micro sponge be identified in order for one skilled in the art to determine specifically
what polymeric sponge material would be inert to various dielectric oils, and why the information as to the
source of the micro sponge material is insufficient for one to practice the invention without undue
experimentation. See PPG Industries Inc. v. Guardian Industries Corp., 75 F.3d 1558, 1564, 37
USPQ2d 1618, 1623 (Fed. Cir. 1996); In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513;
The examiner appears to believe that the part number is a trademark. The examiner has not provided any3
reasons or evidence on which such a belief can be based.
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