Ex parte SHINOZAKI et al. - Page 3




          Appeal No. 1997-3655                                                        
          Application No. 08/351,136                                                  

          exposition of the opposing viewpoints expressed by the                      
          appellants and by the examiner concerning the above noted                   
          rejection.                                                                  


                                       OPINION                                        
               This rejection cannot be sustained.                                    
               It is well settled that the burden of proof lies upon the              
          Patent and Trademark Office in calling into question                        
          enablement of an applicant’s disclosure.  This burden requires              
          that the Patent and Trademark Office advance acceptable                     
          reasoning inconsistent with enablement.  Upon the advancement               
          of acceptable reasoning, the burden then shifts to the                      
          applicant to show that one of ordinary skill in the art could               
          have practiced the claimed invention without undue                          
          experimentation.  In re Strahilevitz, 668 F.2d 1229, 1232, 212              
          USPQ 561, 563 (CCPA 1982).                                                  
               In the case at bar, it is clear that the examiner has not              
          carried his initial burden of proof.  In explaining his                     
          rationale for making the rejection before us, the examiner                  
          states that he “suspected that the claims cover structures                  
          substantially or radically different from those enabled” and                

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