Appeal No. 97-0819
Application 08/252,063
Rather than reiterate the respective positions advanced
by the examiner and appellants, we refer to the examiner’s
answer3 and to appellants’ brief for a complete exposition
thereof.
Opinion
We have carefully reviewed the record on this appeal and
based thereon find that we cannot agree with the examiner that
appealed claims 10 through 28 violate the provisions of 35
U.S.C. § 112, first paragraph, with respect to enablement.
It is well settled that the examiner has the burden of
providing a reasonable explanation, supported by the record as
a whole, why the assertions as to the scope of objective
enablement set forth in the specification is in doubt,
including reasons why the description of the invention in the
specification would not have enabled one of ordinary skill in
this art to practice the claimed invention without undue
experimentation, in order to establish a prima facie case
under the enablement requirement of the first paragraph of §
112. In re Wright, 999 F.2d 1557, 1563, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993); In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988); In re Strahilevitz, 668 F.2d
1229, 1232, 212 USPQ 561, 563 (CCPA 1982); In re Marzocchi,
439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971). Based
on the record before us, the examiner has not made out the
required prima facie case.
We first consider the examiner’s contentions with respect
to the meaning of the claim term “mechanical strength”
(answer, page 9), which issue of definiteness we must resolve
3 The examiner’s supplemental answer does not pertain to the
ground of rejection maintained on appeal.
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