Appeal No. 97-0755 Page 7
Application No. 08/400,066
reverse the examiner's rejection based upon the written
description requirement in the first paragraph of
35 U.S.C. § 112.
To the extent that the examiner intended by stating that 3
the specification does not include an example on the
apparatus/equations necessary to determine an inferred desired
fractional manifold vacuum to make a rejection based upon the
enablement requirement in the first paragraph of 35 U.S.C.4
§ 112, we note only that, in our opinion, the examiner has not
met his burden of proof by advancing acceptable reasoning
inconsistent with enablement. In order to make a rejection,
the examiner has the initial burden to establish a reasonable
basis to question the enablement provided for the claimed
3See the first two paragraphs of the examiner's response
to argument set forth in the answer.
4The test for enablement is whether one skilled in the
art could make and use the claimed invention from the
disclosure coupled with information known in the art without
undue experimentation. See United States v. Telectronics,
Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988),
cert. denied, 109 S.Ct. 1954 (1989); In re Stephens, 529 F.2d
1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
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