Appeal No. 1996-3996
Application 08/250,578
is irrelevant whether this teaching is provided through broad terminology or illustrative
examples. Wright, 999 F.2d at 1561, 27 USPQ2d at 1513; In re Marzocchi, 439 F.2d
220, 223, 169 USPQ 367, 369 (CCPA 1971).
When rejecting a claim under the enablement requirement of section 112, the PTO
bears an initial burden of setting forth a reasonable explanation as to why it believes that the
scope of protection 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. Wright, 999 F.2d 1651-62, 27 USPQ2d
at 1513; Marzocchi, 439 F.2d at 223-24, 169 USPQ at 369-70.
Evidence must be supported by something more than unsupported conclusory
statements as to the ultimate legal question. See Wright, 999 F.2d at 1563, 27 USPQ2d at
1514-15; In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991); In
re Brandstadter, 484 F.2d 1395, 1405-06, 179 USPQ 286, 293-94 (CCPA 1973).
On pages 24 through 26 of the specification, Appellant discloses a preferred
embodiment of the present invention. Specifically, on page 24 of the specification, Appellant
discloses that, "[i]n the LP mode, the rotation speed of rotary head cylinder 5 is maintained at
6
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