Appeal No. 96-2665
Application 07/975,811
the skilled artisan to determine the amounts of specific
components to produce a rainfast microemulsion and clear liquid.
We now turn to the examiner's rejection of the appealed
claims under 35 U.S.C. § 112, first paragraph. According to the
examiner, the present specification does not completely specify
which of the two monomers makes up the backbone of the graft
polymer, and which of the monomers is grafted onto the backbone.
The first paragraph of § 112 requires the specification to
contain a written description of the invention in such a way as
to enable one of ordinary skill in the art to which it pertains
to make and use the invention. When criticizing the adequacy of
a specification description, the examiner has the initial burden
of establishing, by compelling reasoning or objective evidence,
that one of ordinary skill in the art would be unable to practice
the claimed invention. In re Strahilevitz, 668 F.2d 1229, 1232,
212 USPQ 561, 563 (CCPA 1982); In re Marzocchi, 439 F.2d 220,
223, 169 USPQ 367, 369 (CCPA 1971). In our view, the examiner
has not satisfied this initial burden.
Appellant's specification, at page 7, first paragraph,
describes three separate, commercially-available graft polymers
in terms of the type of monomers used, as well as their amounts.
Faced with this disclosure, it is incumbent upon the examiner to
demonstrate that one of ordinary skill in the art would be unable
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