Appeal No. 95-2917
Application 08/082,895
rebut this challenge. In re Doyle, 482 F.2d 1385, 1392, 179
USPQ 227, 232 (CCPA 1973), cert. denied, 416 U.S. 935 (1974);
In re Brown, 477 F.2d 946, 950, 177 USPQ 691, 694 (CCPA 1973);
and In re Ghiron, 442 F.2d 985, 992, 169 USPQ 723, 728 (CCPA
1971). However, the burden was initially upon the Examiner to
establish a reasonable basis for questioning the adequacy of
the disclosure. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563 (CCPA 1982); In re Angstadt, 537 F.2d
498, 504, 190 USPQ 214, 219 (CCPA 1976); and In re Armbruster,
512 F.2d 676, 677, 185 USPQ 152, 153 (CCPA 1975).
On page 9 of the answer, the Examiner appears to be
arguing that because the claim language recites "the flux
density at said MRE during writing being equal to or less than
about 10,000 gauss" the claim's scope covers a range between
zero gauss to 10,000 gauss. The Examiner then argues that the
specification is not enabling for extremely low values such as
10 gauss.
In the reply, filed March 2, 1998, Appellants argue that
the specification discloses a preferred embodiment that has
flux density as per the claimed limitation, i.e., less than
5
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