Appeal No. 97-1452
Application 07/876,105
person skilled in the art to which it pertains, or which it
is most nearly connected, to make and use the invention
commensurate in scope with these claims. The claims are
broader than the enabling disclosure [Supplemental Answer,
sentence bridging pp. 3-4].
It is well established that the examiner has the “burden of
giving reasons, supported by the record as a whole, why the
specification is not enabling.... Showing that the disclosure
entails undue experimentation is part of the PTO’s initial
burden... ” In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219
(CCPA 1976). See also, In re Marzocchi, 439 F.2d 220, 223, 169
USPQ 367, 369 (CCPA 1971) (“A specification disclosure which
contains a teaching of the manner and process of making and using
the invention in terms which correspond in scope to those used in
describing and defining the subject matter sought to be patented
must be taken as in compliance with the enabling requirement of
the first paragraph of § 112 unless there is a reason to doubt
the objective truth of the statements contained therein which
must be relied on for enabling support”).
In neither the rejection, nor his response to the
appellants’ arguments, does the examiner provide a single reason
as to why the specification fails to enable one skilled in the
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