Appeal No. 94-3359
Application 07/941,566
rejection under 35 USC 101.
In rejecting the claims under 35 USC 112, first
paragraph, it was the examiner's burden to establish lack of
enablement by compelling reasoning or objective evidence. In re
Strahilevitz, 668 F.2d 1229, 212 USPQ 561 (CCPA 1982); In re
Armbruster, 512 F.2d 676, 185 USPQ 152 (CCPA 1975). Here, the
examiner has neither established by compelling reasoning nor by
presentation of evidence that a person of ordinary skill in this
art would have been unable to practice the claimed invention
without resort to "undue" experimentation. Rather, the examiner
has merely made an assertion, unsupported by any facts in this
record, that certain polymers within the claims and having
certain molecular weights would not function as described by
appellants.
We recognize that the enablement requirement of the
first paragraph of 35 USC 112 requires that there be some
reasonable correlation between the scope of the claims and the
scope of enablement described in the specification. In re Fisher,
427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). However, it has
been consistently held that the first paragraph of 35 USC 112
requires nothing more than objective enablement. In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
In meeting the enablement requirement, an application
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