Appeal No. 95-2773
Application 07/937,953
not have enabled one of ordinary skill in this art to practice the claimed invention without undue
experimentation, except as set forth at “page 2, lines 25-26 of the specification.” In re Strahilevitz,
668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982); In re Geerdes, 491 F.2d 1260, 1264,
180 USPQ 789, 793 (CCPA 1974); In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367,
369-70 (CCPA 1971). The examiner has not explained why this disclosure along with the disclosure at
page 4, line 25, to page 5, line 5, of the specification would not have enabled one of ordinary skill in this
art to practice the claimed invention to the full extent of the scope of the appealed claims. Accordingly,
we reverse this ground of rejection because the examiner has not carried the burden of establishing a
prima facie case of non-enablement.
The remaining ground of rejection under § 112 involves the written description requirement of
the first paragraph of this section. The examiner holds, without supporting scientific reasoning or
evidence, that “the aspect of having the outer layer comprising a UV-curing resin constitutes new
matter” (answer, pages 4 and 7) which is a rejection based on the written description requirement of §
112, first paragraph. See, generally, Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19
USPQ2d 1111, 1114 (Fed. Cir. 1991); In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90, 99
(CCPA 1976). In order to make out a prima facie case of failure of the claims to comply with this
section of the statute, the examiner must set forth “evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the invention defined by the claims.” In re Alton,
76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996), quoting Wertheim, 541 F.2d at
263, 191 USPQ at 97. We construe appealed claim 1 to require that an outermost layer comprises at
least a UV-curing resin which has the specified characteristics based on Young’s modulus. Exxon
Chemical Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir.
1995) (“The claimed composition is defined as comprising - meaning containing at least - five specific
ingredients.”). The record shows that appellants have substituted the term “comprising” for the phrase
“is made of” and argue that one skilled in this art would have recognized that other ingredients would be
used in making a layer containing at least the specified UV-curing resin. (e.g., principal brief, pages 6-7;
reply brief, pages 1-2). The examiner has not rebutted appellants’ contention and, indeed, has done no
more than allege that “the specification and the claims” do not support “comprising.” Accordingly, we
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