Appeal No. 95-3438
Application No. 08/033,656
per minute, we agree with appellants that examples 1 and 2 of
the present specification show that the present process is
reproducible.
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 enableling . . . 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). Based on the facts before us, we
agree with appellants that the examiner has not met his burden
of showing that the disclosure in the specification entails
undue experimentation. Accordingly, we cannot sustain the
stated rejection under 35 U.S.C. § 112, first paragraph,
“enablement requirement.”
INDEFINITENESS
Appealed claim 5 stands rejected under 35 U.S.C. § 112,
second paragraph, on the grounds that the use of a generic
term, “a silane”, to introduce a Markush group is confusing
when one member of the Markush group is the compound silane,
SiH . Appellants argue and we agree, that “a silane” is a
4
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