Ex parte PUTHOFF - Page 6




          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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