Ex parte THOMAS J. GREENBOWE et al. - Page 6




          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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