Appeal No. 96-0814
Application 08/066,331
Thus, the specification is non-enabling. [answer, page
5]
The dispositive issue with regard to the enablement
requirement found in the first paragraph of 35 U.S.C. § 112 is
whether the appellants’ disclosure, considering the level of
ordinary skill in the art as of the date of the appellants’
application, would have enabled a person of such skill to make
and use the claimed invention without undue experimentation. In
re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563-64 (CCPA
1982). The amount of experimentation required, in addition to
not being undue, must not require ingenuity beyond that expected
of one of ordinary skill in the art. In re Angstadt, 537 F.2d
498, 504, 190 USPQ 214, 218 (CCPA 1976). The examiner has the
initial burden of producing reasons that substantiate a rejection
based on a lack of enablement. In re Strahilevitz, 668 F.2d at
1232, 212 USPQ at 563 (CCPA 1982) and In re Marzocchi, 439 F.2d
220, 224, 169 USPQ 367, 370 (CCPA 1971). Once this is done, the
burden shifts to the appellants to rebut this conclusion by
presenting evidence to prove that the disclosure is enabling. In
re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA 1973),
cert. denied, 416 U.S. 935 (1974) and In re Eynde, 480 F.2d 1364,
1370, 178 USPQ 470, 474 (CCPA 1973).
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