Appeal No. 1998-3416
Application 08/096,538
reasonable correlation to the scope of enablement provided by the disclosure.
Enablement is also not precluded even if some experimentation is necessary, although the
amount of experimentation needed must not be unduly excessive. Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986),
cert. denied, 480 U.S. 947 (1987).
If the examiner had a reasonable basis for questioning the sufficiency of the
disclosure, the burden shifted to the appellants to come forward with evidence to rebut this
challenge. In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-33 (CCPA 1973), cert.
denied, 416 U.S. 925 (1974); In re Brown, 477 F.2d 946, 950, 177 USPQ 691, 694
(CCPA 1973); and In re Ghiron, 442 F.2d 985, 992, 169 USPQ 723, 728 (CCPA 1971).
However, the burden was initially upon the examiner to establish a reasonable basis for
questioning the adequacy of the disclosure. In re Angstadt, 537 F.2d 498, 504, 190
USPQ 214, 219 (CCPA 1976); and In re Armbruster, 512 F.2d 676, 678, 185 USPQ 152,
154 (CCPA 1975).
Although we sympathize somewhat with the examiner's views expressed in the
answer as to this rejection, the subject matter of each independent claim on appeal
basically reflects in like manner and scope the data structures set forth in Figures 3 through
3
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