Appeal No. 2006-1544
Application 10/024,621
1988). Moreover, in rejecting a claim for lack of enablement, it is
also well settled that the examiner has the initial burden of
advancing acceptable reasoning inconsistent with enablement in order
to substantiate the rejection. See In re Strahilevitz, 668 F.2d
1229, 212 USPQ 561 (CCPA 1982); In re Marzocchi, 439 F.2d 220, 169
USPQ 367 (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, 179 USPQ 227 (CCPA 1973); In re Eynde, 480
F.2d 1364, 178 USPQ 470 (CCPA 1973).
In the case before us, after reviewing the rejection,
appellants’ arguments in the brief and reply brief, and the
disclosure as set forth in the specification, we are of the opinion
that the examiner has not met his burden of advancing acceptable
reasoning inconsistent with enablement. The examiner’s position as
set forth in the answer (page 4) is that
[t]he Claims recite providing beauty advice being a
function of an astrological horoscope sign of the subject.
However, the relationship between astrological horoscope sign
and a beauty product is not clear. The specification does not
provide any indication of how an astrological horoscope sign
and a beauty product are interrelated. Furthermore, the
examiner points out that knowledge in astrology and cosmetic
industry is of such a different nature that it is not possible
to envision how one would arrive to choosing a beauty product
for a person based on knowing a horoscope sign of the person.
Therefore, the functionality connecting the method steps of:
“receiving astrological horoscope sign of a consumer” and
“recommending to the consumer a beauty product”, which is
4
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