Appeal No. 95-3989
Application No. 07/956,107
examiner considers the materials of the applied references to
be within the scope of the claims is irrelevant to the
definiteness of the claim term "monomer." (See page 5 of
Answer.)
The examiner's rejection of the appealed claims under
35 U.S.C. § 112, first paragraph, is similarly flawed. The
examiner states "[t]here is no disclosure of material under
the designation 'monomer' or 'prepolymer' sufficient to give
the specific guidance necessary to make and use the
composition invention of this application" (page 5 of Answer).
Again, the examiner has the initial burden of establishing
departures from requirements of § 112, first paragraph, such
as lack of enablement, by compelling reasoning or objective
evidence. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ
561, 563 (CCPA 1982); In re Marzocchi, 439 F.2d 220, 223, 169
USPQ 367, 369 (CCPA 1971). In the present case, the examiner
has not satisfied his burden of demonstrating that the
aforementioned descriptions at pages 8 and 9 of the present
specification, as well as in the examples, would not describe
the claimed monomers to one of ordinary skill in the art or
enable such an artisan to practice the claimed invention
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