Ex parte PUTHOFF - Page 4




          Appeal No. 95-3753                                                          
          Application No. 08/109,983                                                  
                                                                                     
                                                                                     
          accomplishes the objectives claimed by appellant,” and “how is              
          the A field measured.”  With respect to the shield 23, the                  
          examiner asks (Answer, pages 5 and 6) “[h]ow is it ‘permeable to            
          the scalar and vector potential signal’ while resisting the                 
          electromagnetic field?”                                                     
               In response to the rejection under 35 U.S.C.  101,                    
          appellant argues (Reply Brief, pages 1 and 2) that:                         
                    In a proper rejection based on inoperativeness, it                
               is incumbent upon the Examiner to establish a prima                    
               facie case that the device will not work.  In re                       
               Langer, [503 F.2d 1380] 183 USPQ 288 (CCPA, 1974).  In                 
               other words, the Examiner must introduce evidence to                   
               show that the claims define an aspect of technology                    
               that is contrary to accepted theory; for example, that                 
               the claims are directed to a perpetual motion machine.                 
               The Examiner’s Answer completely fails in this regard.                 
               An inspection of the application as filed, in fact,                    
               provides a scientific basis to show the invention does,                
               in fact, operate using standard scientific theories                    
               based on Maxwell’s Equations; see e.g. the paragraph                   
               bridging pages 6 and 7 and the only full paragraph on                  
               page 7 of the application as filed.                                    
          In response to the lack of enablement rejection under the first             
          paragraph of 35 U.S.C.  112, appellant argues (Brief, pages 19             
          and 20) that:                                                               


               [T]he Examiner has the initial burden of proving that                  
               the requirements of 35 USC 112, paragraph 1, are not                   
               met.  In re Marzocchi and Horton, [439 F.2d 220]                       
               169 USPQ 367 ([CCPA] 1971), p. 369.  In the present                    
               case, no evidence has been presented by the Examiner to                

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