Ex parte THOMAS R. OAKES, et al. - Page 4




          Appeal No. 95-3977                                                          
          Application 08/004,075                                                      


          OPINION                                                                     
               A.  The Rejection under 35 U.S.C.  112, first paragraph               
               Claims 46, 52-60, 65 and 66 are all directed to a method of            
          sanitizing or disinfecting using the composition of claim 27 “for           
          a time sufficient to sanitize the process facilities” (claim 46)            
          or “for an effective period of time sufficient to sanitize or               
          disinfect the solid surface or liquid media” (claim 52).  The               
          examiner states that a specific time “is lacking”, one of                   
          ordinary skill in the art is “forced to guess” at the general or            
          specific meaning of sanitizing/disinfecting, and perform “undue             
          experimentation” to arrive at the requisite time (answer, page              
          3).                                                                         
               When rejecting a claim under the enablement requirement of             
          section 112, the PTO bears an initial burden of setting forth a             
          reasonable explanation as to why it believes that the scope of              
          protection provided by that claim is not adequately enabled by              
          the description of the invention in the application, including              
          providing sufficient reasons for doubting any assertions in the             
          specification as to the scope of enablement.  See In re Wright,             
          999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).                 
               The examiner has not met this initial burden by failing to             
          present any reasonable explanation as to why appellants’                    

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