Appeal No. 1997-1373
Application No. 08/478,811
acceptable level of interference between base stations. In our
view, this description unquestionably provides compliance with
the statutory “written description” requirement, i.e., Appellant
was clearly in possession of the invention at the time of filing
of the application.
As to the Examiner’s assertion of lack of enablement of
Appellant’s disclosure, we note that, in order to comply with
the enablement provision of 35 U.S.C. § 112, first paragraph,
the disclosure must adequately describe the claimed invention so
that the artisan could practice it without undue
experimentation. In re Scarbrough, 500 F.2d 560, 566, 182 USPQ
298, 305 (CCPA 1974); In re Brandstadter, 484 F.2d 1395, 1404,
179 USPQ 286, 293 (CCPA 1973); and In re Gay, 309 F.2d 769, 774,
135 USPQ 311, 316 (CCPA 1962). If the Examiner has a reasonable
basis for questioning the sufficiency of the disclosure, the
burden shifts to Appellant to come forward with evidence to
rebut this challenge. In re Doyle, 482 F.2d 1385, 1392, 179
USPQ 227, 232 (CCPA 1973), cert. denied, 416 U.S. 935 (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 is initially upon the Examiner to establish
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