Appeal No. 1998-1006
Application No. 08/499079
experimentation.” In re Vaeck, 947 F.2d 488, 495-96, 20
USPQ2d 1438, 1444-45 (Fed. Cir. 1991). Also, it is well
settled that the examiner has the burden of providing a
reasonable explanation, supported by the record as a whole,
why the assertions as to the scope of objective enablement
set forth in the specification are in doubt, including
reasons why the description of the invention in the
specification would not have enabled one of ordinary skill
in this art to practice the claimed invention without undue
experimentation, in order to establish a prima facie case
under the enablement requirement of the first paragraph of
§ 112. In re Wright, 999 F.2d 1557, 1561, 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 states that appellants’ disclosure is
only enabling for subject matter in accordance to page 9,
lines 11-15 of appellants’ specification. The examiner
interprets this part of the specification as directed to a
synthetic resin restricted to the three types enumerated
therein. (Office Action mailed on 5/10/96, page 4, Answer,
page 4).
Appellants argue that the examiner “made no attempt to
explain why or in what respect additional ‘specific
embodiments’ would be required to enable one of ordinary
skill in the art to practice the invention as claimed".
(Brief, pages 6-7).
As noted above, the examiner has the burden of
providing a reasonable explanation, supported by the record
as a whole, why the assertions as to the scope of objective
enablement set forth in the specification are in doubt,
including reasons why the description of the invention in
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