Appeal No. 95-2896 Page 8
Application No. 07/977,771
statement. Otherwise, there would be no need for
the applicant to go to the trouble and expense of
supporting his presumptively accurate disclosure.
In our view, the examiner has not carried his initial
burden of setting forth evidence or sound technical reasoning
which indicates that one of ordinary skill in the art would
not have been enabled by appellants’ specification to form
diamond on a substrate, via a solid-state formation process,
from the carbon present in a metal-carbon alloy that is
deposited on the substrate.
Whether making and using the invention would have
required undue experimentation, and thus whether the
disclosure is enabling, is a legal conclusion based upon
several underlying factual inquiries. See In re Wands, 858
F.2d 731, 736-37, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). For
the reasons expressed by appellant in the brief and reply
brief, the examiner has not presented sufficient factual
determinations to support the legal conclusion that undue
experimentation is required to practice the invention as
claimed. With regard to appellant's use of prophetic examples
in the specification, we agree with appellant that such "...
does not constitute a failure to enable" (brief, page 8).
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