Appeal No. 95-3753
Application No. 08/109,983
The examiner has the initial burden of making a prima facie
evidentiary showing that the claims are unpatentable because of
lack of enablement or inoperativeness. See In re Marzocchi,
439 F.2d 220, 223-224, 169 USPQ 367, 369-370 (CCPA 1971); and
Fregeau v. Mossinghoff, 776 F.2d 1034, 1038, 227 USPQ 848, 852
(Fed. Cir. 1985). After considering the positions of both the
examiner and the appellant, we agree with the appellant that the
examiner’s rationale for rejecting the claims under the first
paragraph of 35 U.S.C. § 112 and 35 U.S.C. § 101 lacks the
required evidence to establish a prima facie case of lack of
enablement, inoperativeness, and lack of utility. In the absence
of such a prima facie case, the burden never shifted to appellant
to present rebuttal evidence. See In re Brana, 51 F.3d 1560,
1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995). Thus, we see no
need to comment on the declaration submitted by appellant. The
rejections of claims 1 through 59 are reversed.
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