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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