Appeal No. 96-2518
Application No. 08/040,053
apparent from the specification nor the drawings
[Answer-page 3]
To comply with the enablement clause of the first
paragraph of 35 U.S.C. § 112, the disclosure must adequately
describe the claimed invention so that the artisan could
practice it without undue experimentation. In re Scarbrough,
500 F.2d 560, 566, 182 USPQ 298, 303 (CCPA 1974); In re
Brandstadter, 484 F.2d 1395, 1407, 179 USPQ 286, 295 (CCPA
1973); In re Gay, 309 F.2d 769, 774, 135 USPQ 311, 316 (CCPA
1962). If the examiner had a reasonable basis for questioning
the sufficiency of the disclosure, the burden shifted to
appellant to come forward with evidence to rebut this
challenge. In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227,
232 (CCPA 1973); In re Ghiron, 442 F.2d 985, 992, 169 USPQ
723, 728 (CCPA 1971). However, the burden was initially on
the examiner to establish a reasonable basis for questioning
the adequacy of disclosure. In re Strahilevitz, 668 F.2d
1229, 1232, 212 USPQ 561, 563 (CCPA 1982).
We find that the examiner in the instant case did not
have a reasonable basis for questioning the sufficiency of the
disclosure. The level of skill in the computer arts is very
high and we find it unreasonable that one skilled in such arts
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