Appeal No. 1997-0106
Application 07/792,482
support thereof. See Appendices B and C attached to the
Brief.
The Court explains the burden in a rejection based on
enablement in In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d
1510, 1513 (Fed. Cir. 1993), as follows:
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.
The sole basis set forth by the examiner in support of
the enablement rejection is that "[a]ltering a substrate can
mean most anything, including weathering, which is not taught
in Applicant's specification." Paper No. 25, p. 3; Answer, p.
6. While all possible methods of altering a substrate may not
have been disclosed in appellants' specification, the examiner
has failed to establish that undue experimentation would be
required to make and use the full scope of the claimed
invention. See Wright, 999 F.2d at 1561, 27 USPQ2d at 1513
6
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