Appeal No. 95-2138
Application 07/852,078
OPINION
We will not sustain the rejection of claims 1 through 3 and
10 through 15 under 35 U.S.C. '' 103 or 112.
The Examiner objected to the specification under
35 U.S.C. ' 112, first paragraph, for failing to teach how to use
the invention. Claims 1 through 3 and 10 through 15 stand
rejected under 35 U.S.C. ' 112, first paragraph, for the reasons
set forth in the objection to the specification. On page 2 of
the answer, the Examiner argues that the specification fails to
make it clear how to use a stack of layers shown in Appellants=
Figures 4, 5 and 6.
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, 303 (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 had a reasonable basis for
questioning the sufficiency of the disclosure, the burden shifted
to the Appellants to come forward with evidence to rebut this
challenge. In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232
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