Appeal No. 97-0840
Application 08/159,405
ordinary skill in the art, in light of the knowledge in the
art and appellants’ specification, would not be apprised of
the scope of the claims on appeal.
The language of the examiner’s rejection is couched in
terms more suitable for a rejection under the first paragraph
of § 112, for lack of enablement (e.g., “inventive step”, “how
to determine”, “how the ink is formulated”, see the Answer,
page 2). However, if the rejection was meant to be under the3
first paragraph of § 112, the examiner bears the initial
burden of setting forth a “reasonable explanation as to why
[the examiner] believes that the scope of protection provided
by that claim is not adequately enabled” by the specification
disclosure, i.e., “providing sufficient reasons for doubting
any assertions in the specification as to the scope of
enablement.” In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d
1510, 1513 (Fed. Cir. 1993). This reasoning usually would
include a discussion of the factors showing that “undue
experimentation” is required to make and use the full scope of
3Note also that appellants’ Brief presents arguments regarding “undue
experimentation” which falls in under the requirements of the first paragraph of § 112
(Brief, pages 4 and 5). A claim may be definite even if it is so broad that the
enabling disclosure is not commensurate in scope with the subject matter encompassed by
the claims. In re Ehrreich, 590 F.2d 902, 906-07, 200 USPQ 504, 508 (CCPA 1979).
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