Appeal No. 1996-2308
Application 08/179,008
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. [Citation omitted.]
The examiner argues that appellants’ specification
provides no guidance as to how to carry out the one-step
process (answer, pages 4 and 6). Specifically, the examiner
argues that the specification does not disclose what
combination of solvent, quantities of base and phase transfer
catalyst, and composition of the base are required (answer,
pages 5 and 8).
To establish a prima facie case of lack of enablement, it
is not sufficient for the examiner to merely state what
appellants’ specification does not disclose. The examiner
must provide sufficient reasons for doubting appellants
assertion in their specification (page 8, lines 27-32) that
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