Ex parte SHINOZAKI et al. - Page 5




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

          polymers the examiner describes with the undefined                          
          characterization of being “substantially or radically                       
          different from those enabled.”                                              
               According to the examiner, his rationale in making the                 
          nonenablement rejection under consideration is supported by In              
          re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973).                   
          This is incorrect.  As properly indicated by the appellants,                
          the nonenablement issue of In re Brandstadter related to all                
          embodiments encompassed by the rejected claims and not to                   
          “suspected” embodiments which are “assumed” to be nonenabled                
          as the examiner has done in this case.                                      
               In essence, rather than carry his initial burden of                    
          establishing a prima facie case of nonenablement, the examiner              
          has inappropriately leaped to an unsupported conclusion of                  
          nonenablement based upon his unfounded suspicions and                       
          assumptions.  In this way, the examiner inappropriately has                 
          required the appellants to carry the initial burden of proving              
          that the here claimed subject matter is enabled.  As                        
          previously indicated, it is the initial burden of the examiner              
          to advance acceptable reasoning inconsistent with enablement.               
          In re Strahilevitz, id.  Further, the analytical framework by               

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