Appeal No. 1997-1892
Application 08/209,638
1345, 188 USPQ 659, 661 (CCPA 1976).
Thus, the dispositive issue is whether Appellants’
disclosure, considering the level of ordinary skill in the art
as of the date of Appellants’ application, would have enabled
a person of such skill to make and use Appellants’ invention
without undue experimentation. The threshold step in
resolving this issue is to determine whether the Examiner has
met his
burden of proof by advancing acceptable reasoning consistent
with the enablement requirement.
The Examiner contends [answer, page 2] that “the
disclosure is enabling only for claims limited to having a
split electrode on one (front) surface and another electrode
on the ‘back side’ surface.” The Examiner further alleges
[id, 2] that “[t]he disclosed device would be inoperative
without the cooperation of all ‘three’ electrodes; thus the
‘backside’ surface electrode is essential to the operation of
the disclosed device, and claims omitting this feature would
be incomplete.”
Appellants argue at length [brief, pages 9 to 17 and
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