Appeal No. 1995-4405
Application No. 08/083,680
examiner erred in neither acknowledging nor addressing appellants’ explicit arguments based on Fig. 3
and its explanatory text in the specification. Thus, we will not sustain the rejection on the basis of
written description.
A specification complies with the enablement requirement of 35 U.S.C. § 112, first paragraph,
if it allows one of ordinary skill in the art to make and use the claimed invention without undue
experimentation and, again, the examiner has the initial burden of establishing lack of enablement. In re
Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
The examiner urges that the disclosure fails to support the scope of the invention (answer, page
7) but cites no evidence and makes no analysis of the kind which the Federal Circuit approved in In re
Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) showing on this record that one
of ordinary skill in the art would have had any particular difficulty in carrying out appellants’ claimed
invention without undue experimentation. Once again, the examiner failed to address appellants’
argument that the specification, especially on page 13, together with the Figures enabled adjusting the
reservoir response to produce a controlled, albeit variable, concentration of the gas of interest in the
reference medium (brief, pages 3-4). Therefore, we will not sustain the rejection on the basis of lack of
enablement.
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