Appeal No. 96-1603
Application 08/057,989
showing of good and sufficient reason why it was not earlier
presented, as required by 37 CFR § 1.195. In addition,
although the exhibit labels certain elements “hydrostatic
pressure pockets”, it does not show that a person skilled in
the art would recognize the elements as “hydrostatic pressure
pockets” without the label. As such, the exhibit is not
evidence that a person skilled in the art would know that
bearing 15 is a hydrostatic bearing. In view of the
foregoing, it is our view that there is no written description
support for the recitation of “hydrostatic” bearing in claim
13.
With regard to the question of enablement, it is well
settled that the examiner has the initial burden of producing
reasons that substantiate a rejection based on lack of
enablement. See In re Marzocchi, 439 F.2d 220, 223, 169 USPQ
367, 370 (CCPA 1971); In re Wright, 999 F.2d 1557, 1561, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993). Once this is done, the
burden shifts to the appellant to rebut this conclusion by
presenting evidence to prove that the disclosure is enabling.
Id. At 1561. In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470,
474 (CCPA 1973); In re Doyle, 482 F.2d 1385, 1392, 179 USPQ
6
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