Appeal No. 95-2440
Application 07/705,726
specification does not enable one of ordinary skill in the art
to make and use the claimed subject matter.
Determination of enablement is a question of law based on
underlying factual findings. In re Vaeck, 947 F.2d 488, 495,
20 USPQ2d 1438, 1444 (Fed. Cir. 1991). The examiner has the
initial burden of supplying the factual basis to establish
unpatentability of the claimed subject matter based on lack of
an enabling disclosure. In so doing, the examiner must take
into account, inter alia, one skilled in the pertinent art,
the application disclosure and information known in the art.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988); United States v. Telectronics, Inc., 857 F.2d 778, 785,
8 USPQ2d 1217, 1223 (Fed. Cir. 1988).
However, the examiner makes the following conclusory
remarks only to justify his or her rejection:
The specification does not describe how to carry
out the method of the claimed invention. There is
no recitation of necessary growth conditions, doping
levels, or interconnect fabrication steps.
These remarks are not only inaccurate, but also did not take
into account, among other things, information known in the
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