Appeal No. 96-1367
Application No. 07/804,501
Upon careful consideration of the opposing arguments
presented on appeal, we find ourselves in essential agreement
with the position advanced by appellants in their principal
and reply briefs on appeal. Accordingly, we will not sustain
the examiner's rejections.
We consider first the examiner's rejection of claims 10,
28 and 29 under 35 U.S.C. § 112, first paragraph. According
to the examiner, the claims are not enabled by the present
specification since the specification is limited to helium as
the refrigerant, whereas the claims are sufficiently broad to
encompass the use of other conventional refrigerants, such as
fluorocarbons, hydrocarbons, ammonia or carbon dioxide.
However, it is well settled that to properly impose a
rejection under the enablement provision of § 112, first
paragraph, the examiner carries the initial burden of
establishing, by compelling reasoning or objective evidence,
that one of ordinary skill in the art would be unable to
practice the claimed invention without undue experimentation.
In re Strahilevitz, 668 F.2d 1229, 1232,
212 USPQ 561, 563 (CCPA 1982); In re Marzocchi, 439 F.2d 220,
223, 169 USPQ 367, 369 (CCPA 1971). In the present case, it
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