Appeal No. 95-4984
Application No. 08/038,369
examiner has the initial burden of establishing lack of
enablement by compelling reasoning or objective evidence that
one of ordinary skill in the art would be unable to practice
the claimed invention without at least resorting to undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563 (CCPA 1982); In re Armbruster, 512 F.2d 676,
677, 185 USPQ 152, 153 (CCPA 1975); In re Marzocchi, 439 F.2d
220, 223, 169 USPQ 367, 369 (CCPA 1971). In the present case,
the examiner states that the claim language "experimentally
determined data" is not fully disclosed in the specification
because the specification does not provide details such as the
equipment used in obtaining the data, what data is processed
and when is the test procedure performed. However, the fatal
flaw in the examiner's objection/rejection is that it is
totally devoid of the requisite compelling reasoning or
objective evidence to support the legal conclusion that one of
ordinary skill in the art would be unable to experimentally
determine the particular selected temperature and duration of
heating values that are required for the metal article to
upon the enablement requirement of 35 U.S.C. § 112, first
paragraph.
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