Appeal No. 1996-3121
Application No. 08/115,783
THE 35 U.S.C. § 112, FIRST PARAGRAPH ENABLEMENT
ISSUE
Appealed claims 14 and 15 stand rejected under the first
paragraph of 35 U.S.C. § 112, for the stated reason that “the
disclosure is enabling only for claims limited to the
substrates disclosed in the specification.” The examiner
further asserts that the claim language “metals having a
thermal conductivity of at least the thermal conductivity of
copper-tungsten alloy” covers substrates “not contemplated,
given that high-W alloy has a very low conductivity.” See the
answer at page 3.
For a proper rejection under the enablement provision of
35 U.S.C. § 112, it is incumbent upon the examiner to provide,
in the first instance, factual evidence and/or scientific
reasoning that one of ordinary skill in the art would be
required to resort to undue experimentation to practice the
invention as defined by the scope of the claims. In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563-564 (CCPA
1982). In the present case, the examiner has presented no
such persuasive evidence or reasoning which supports the
conclusion that a skilled artisan would be unable to practice
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