Appeal No. 95-4065
Application No. 07/872,185
5-13. Accordingly, insofar as the examiner’s rejection is
based on appellants’ failure to meet the written description
requirement of § 112, first paragraph, we determine that the
examiner has failed to meet the initial burden of establishing
a lack of written description of the invention as now claimed
and the examiner’s rejection of claims 8, 9 and 22 is
reversed.
LACK OF ENABLEMENT
“[T]o be enabling, the specification of a patent must
teach those skilled in the art how to make and use the full
scope of the claimed invention without ‘undue
experimentation.’” In re Wright, 999 F.2d 1557, 1561, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993). The burden of proof is
set forth by the Court in In re Wright, supra:
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial
burden of setting forth a reasonable explanation as
to why it believes that the scope of protection
provided by that claim is not adequately enabled by
the description of the invention provided in
the specification of the application; this
includes, of course, providing sufficient reasons for
doubting any assertions in the specification as to the
scope of enablement. If the PTO meets this burden,
the burden then shifts to the applicant to provide
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007