Appeal No. 93-4332
Application 07/707,717
examiner’s burden at the outset to establish with objective
evidence or scientific reasoning a legitimate concern that the
bisimides within the scope of the appealed claims is not enabled
by the specification and that undue experimentation would be
required to practice the invention. See In re Strahilevitz, 668
F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982); In re Armbruster,
512 F.2d 676, 677-78, 185 USPQ 152, 153 (CCPA 1975); In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
Here, the examiner has presented no such evidence. Accordingly,
to the extent that the claims have been rejected based on a lack
of enablement of the specification, such rejection is reversed.
CONCLUSION
The decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS
) AND
) INTERFERENCES
)
ANTHONY McFARLANE )
Administrative Patent Judge )
)
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