Appeal No. 95-0801
Application 08/018,830
isocyanurate structure.? (answer, page 3). The examiner
additionally takes the position ?that the specification would
not enable any person skilled in the art to practice the
process defined by each of the rejected claims without undue
experimentation.? (answer, page 3). The examiner advances the
reasoning that catalytic systems are generally considered
unpredictable and specifically the catalysis of isocyanurate
forming processes by alkali metal derivatives takes place
unpredictably (answer, page 3, citing column 2, lines 34-38,
of Robin).
The specification, when filed, must enable one skilled in
the particular art to use the invention without undue
experimentation. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988). The specification must teach
those of skill in the art how to make and use the invention as
broadly as it is claimed. See In re Goodman, 11 F.3d 1046,
1050, 29 USPQ2d 2010, 2013 (Fed. Cir. 1993). However, it is
well settled that the initial burden of establishing lack of
enablement under the first paragraph of 35 U.S.C. § 112 lies
with the examiner. See In re Wright, 999 F.2d 1557, 1561, 27
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