Appeal No. 2002-0283
Application 09/328,918
F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982); In re Marzocchi,
439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). Once this is
done, the burden shifts to appellant to rebut this conclusion by
presenting evidence to prove that the disclosure in the
specification is enabling. See In re Doyle, 482 F.2d 1385, 1392,
179 USPQ 227, 232 (CCPA 1973); In re Eynde, 480 F.2d 1364, 1370,
178 USPQ 470, 474 (CCPA 1973).
In the case before us, after reviewing the disclosure as set
forth in the specification and the invention as seen in the
drawings of the application, we are of the opinion that the
examiner has not met his burden of advancing acceptable reasoning
inconsistent with enablement. Again, the examiner urges that the
features noted in the rejection are not shown in Figures 2A and 9
of the application, and now further contends that undue
experimentation would be required to make and/or use the claimed
features.
We are particularly troubled that the examiner has made no
attempt to explain why one of ordinary skill in the art would
have been unable to understand that portion of the specification
directed to the elected species of the invention (i.e., Figure 9)
when the disclosure of the present application is considered as a
whole. In that regard, we note that we see no discussion by the
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