Appeal No. 96-2865
Application No. 08/081,561
212 USPQ 561, 563-64 (CCPA 1982). In calling into question the
enablement of the appellants’ disclosure, the examiner has the
initial burden of advancing acceptable reasoning inconsistent
with enablement. Id.
The only reasoning inconsistent with enablement advanced by
the examiner involves the lack of detail in the appellants’
specification as to the software necessary to implement the
claimed invention. According to the examiner, “[w]ithout a clear
description of the software, one [of] ordinary skill in the art
can not practice the invention without undue experimentation”
(answer, page 11). The appellants’ specification indicates,
however, that the necessary software would be relatively
straightforward. It is not clear, nor has the examiner cogently
explained, why the mere lack of a detailed description of such
software would prevent a person of ordinary skill from making and
using the appellants’ invention without undue experimentation.
Thus, the examiner has not met the burden of advancing acceptable
reasoning inconsistent with enablement.
In light of the foregoing, we shall not sustain the standing
35 U.S.C. § 112, first paragraph, rejection of claims 1 through
41.
As for the standing 35 U.S.C. § 112, second paragraph,
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