Appeal No. 93-4332
Application 07/707,717
in which Y is a substituted or unsubstituted divalent group
containing at least 2 carbon atoms and a carbon-carbon double
bond, and Z is a divalent linking group. Indeed, our review of
the record indicates that “a bisimide of an unsaturated
dicarboxylic acid” is one and the same as a bisimide having the
above noted formula. We conclude that the language, “which ...
can be,” in connection with the above noted formula, is
reasonably precise and is thus not vague, indefinite or unclear.
Accordingly, the rejection under 35 U.S.C. § 112, second
paragraph is reversed.
Regarding the rejection based on enablement, the examiner
has presented no reasons why he considers the specification to be
nonenabling. That is, the examiner has provided no explanation
as to why a person of ordinary skill in the art would not have
been able to make or use the claimed invention without undue
experimentation. The examiner does not satisfy his initial
burden of establishing a prima facie case of non-enablement
simply by expressing doubt that the specification is not enabling
for the type of bisimide used in the claimed process. It is the
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