Appeal No. 95-3598
Application 08/125,671
tion for patent) enable any person skilled in the art to which
it pertains to make and use the claimed invention. Although the
statute does not say so, enablement requires that the
specification teach those skilled in the art to make and use the
invention without "undue experimentation." In re Wands, 858 F.2d
731, 737,
8 USPQ2d 1400, 1404 (Fed. Cir. 1988). That some experimentation
may be required is not fatal; the issue is whether the amount of
experimentation required is "undue." Id. at 736-37, 8 USPQ2d at
1404.
Moreover, in rejecting a claim for lack of enablement,
it is well settled that the examiner has the initial burden of
producing reasons that substantiate the rejection. See In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982);
In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA
1971). Once this is done, the burden shifts to the appellant to
rebut this conclusion by presenting evidence to prove that the
disclosure in the specification is enabling. See In re Doyle,
482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA 1973); cert. denied,
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