Appeal No. 2002-0033 Page 9
Application No. 09/372,020
invention. See In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993) (examiner must provide a reasonable explanation as to why the scope of
protection provided by a claim is not adequately enabled by the disclosure). Once the
examiner has established a reasonable basis to question the enablement provided for
the claimed invention, the burden falls on the appellants to present persuasive
arguments, supported by suitable proofs where necessary, that one skilled in the art
would be able to make and use the claimed invention using the disclosure as a guide.
See In re Brandstadter, 484 F.2d 1395, 1406, 179 USPQ 286, 294 (CCPA 1973).
Thus, the dispositive issue is whether the appellant's disclosure, considering the
level of ordinary skill in the art as of the date of the appellant's application, would have
enabled a person of such skill to make and use the appellant's invention without undue
experimentation. The threshold step in resolving this issue as set forth supra is to
determine whether the examiner has met his burden of proof by advancing acceptable
reasoning inconsistent with enablement. This the examiner has not done. In fact, the
subject matter of claims 18 to 34 can be made and used by making the embodiment
shown in Figures 1-4 of the application. The examiner has implicitly found that the
subject matter of claims 1 to 17 comply with enablement requirement of 35 U.S.C. §
112, first paragraph. Thus, if the more specific claims 1 to 17 are enabled, we see no
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