Appeal No. 2001-2628 Page 4
Application No. 09/259,888
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).
Here, the examiner does not explain why the description
of the invention as set forth in the specification would not
have enabled one of ordinary skill in the art to practice
the claimed invention without undue experimentation.
We therefore determine that the examiner has not met
the required burden as described above.
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