Ex parte RAO et al. - Page 7



          Appeal No. 96-3202                                                          
          Application No. 08/183,464                                                  


               In order to make a rejection, the examiner has the                     
          initial burden to establish a reasonable basis to question the              
          enablement provided for the claimed invention.  See In re                   
          Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.                  
          Cir. 1993) (examiner must provide a reasonable explanation as               
          to why the scope of protection provided by a claim is not                   
          adequately enabled by the disclosure).                                      


               Thus, the dispositive issue 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 the appellants'                      
          invention without undue experimentation.  The threshold step                
          in resolving this issue as set forth supra is to determine                  
          whether the examiner has met his burden of proof by advancing               
          acceptable reasoning inconsistent with enablement.  This the                
          examiner has not done.                                                      


               For the reasons set forth in the appellants' brief (p.                 
          10) and reply brief (pp. 2-3), it is our opinion that the                   
          appellants' original disclosure would have enabled a person of              
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