Appeal No. 95-3835
Application 08/107,047
ordinary skill in the art to extend appellant’s disclosure beyond the working examples
(answer, page 6). Appellant argues that the disclosure in U.S. 5,194,181 to Reitz provides
a teaching at column 8, lines 51-64, which may be such a theory, and that the examiner has
provided no reasoning in support of the asserted nonenablement (brief, page 21).
A specification complies with the 35 U.S.C. § 112, first paragraph, enablement
requirement if it allows those of ordinary skill in the art to make and use the claimed
invention without undue experimentation. See In re Wright, 999 F.2d 1557, 1561, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De Nemours &
Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984). As stated by the court in
Wright, 999 F.2d at 1561-62, 27 USPQ2d at 1513:
Nothing more than objective enablement is required, and therefore it is
irrelevant whether this teaching is provided through broad terminology or
illustrative examples. [Citation omitted.]
When rejecting a claim under the enablement requirement of section
112, the PTO bears an initial burden of setting forth a reasonable
explanation as to why it believes that the scope of protection provided by that
claim is not adequately enabled by the description of the invention provided
in the specification of the application; this includes, of course, providing
sufficient reasons for doubting any assertions in the specification as to the
scope of enablement. If the PTO meets this burden, the burden then shifts to
the applicant to provide suitable proofs indicating that the specification is
indeed enabling. [Citation omitted.]
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