Appeal No. 2001-2118
Application No. 08/987,977
We do not sustain the examiner’s rejection. Our reasons
follow.
At the outset, we keep in mind that the test regarding
enablement is whether the disclosure, as filed, is sufficiently
complete to enable one of ordinary skill in the art to make and
use the claimed invention without undue experimentation. In re
Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
and In re Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 302 (CCPA
1974). The experimentation required, in addition to not being
undue, must not require ingenuity beyond that expected of one of
ordinary skill in the art. See In re Angstadt, 537 F.2d 498,
504, 190 USPQ 214, 218 (CCPA 1976).
It is also well settled that the examiner has the initial
burden of producing reasons that substantiate a rejection based
on lack of enablement. In re Strahilevitz, 668 F.2d 1229, 1232,
212 USPQ 561, 563 (CCPA 1982) and In re Marzocchi, 439 F.2d 220,
224, 169 USPQ 367, 370 (CCPA 1971). Once this is done, the
burden shifts to the appellant to rebut this conclusion by
presenting evidence to prove that the disclosure is enabling.
In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA 1973),
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