Appeal No. 1998-0653 9
Application No. 08/282,278
substituent as hydrogen is part of the original component. However, the use of
“hydrogen” as a substituent is customary, clear, and without ambiguity. Accordingly, we
conclude that no lack of definiteness occurs.
Finally, the fourth and final ground of rejection is directed to the first paragraph
35 U.S.C. § 112, issue of enablement. When rejecting a claim under the enablement
requirement of section 112, the PTO bears the initial burden of setting forth a
reasonable explanation as to why it believes the scope of protection provided by the
claimed subject matter is not adequately enabled by the description of the invention
provided in the specification of the application. This includes providing sufficient reasons
for doubting any assertions in the specification as to the scope of enablement. If this
burden is met, the burden then shifts to the appellants to provide suitable proofs that the
specification is enabling. In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510,
1513 (Fed. Cir. 1993); In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367,
369-70 (CCPA 1971). The examiner finds that the specification fails to enable one
skilled in the art to make the compounds wherein R4 and/or R5 are other than hydrogen.
It is the examiner’s position that “[t]he lithium acetylide disclosed on page 7, line 19,
does not contain any substituent groups capable of generating the R4 and/or R5 groups in
the claimed naphthopyran compounds.” See Answer, pages 7 and 8. In our view, the
examiner has not met his burden of establishing a prima facie case of lack of enablement.
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