Appeal No. 96-0175
Application 07/977,388
enablement (answer, pages 3 and 6-7). It is well settled that under § 112, first paragraph, the
examiner has the burden of providing a reasonable explanation, supported by the record as a whole,
why the assertions as to the scope of objective enablement set forth in the specification are in doubt,
including reasons why the description of the invention in the specification would not have enabled one of
ordinary skill in this art to practice the claimed invention without undue experimentation, in order to
establish a prima facie case under the enablement requirement of the first paragraph of § 112. In re
Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Wands, 858 F.2d
731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988); In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563 (CCPA 1982); In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA
1976)(“[T]he PTO has the burden of giving reasons, supported by the record as a whole, why the
specification is not enabling. In re Armbruster, 512 F.2d 676, 185 USPQ 152 (CCPA 1975). Showing
that the disclosure entails undue experimentation is part of the PTO’s initial burden under Armbruster .
. . .”); 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). Thus, in order to make out a prima
facie case under this section of the statute, more is required than the allegation that the “specification
refers to an abrupt change of 1 mm only in the case of gallium arsenide not the broadly claimed
semiconductors” (answer, page 2). Accordingly, since the examiner has failed to provide any
explanation based on the record as a whole why the objective enablement set forth in the specification
is in doubt and would not have enabled one of ordinary skill in this art to practice the claimed invention
without undue experimentation, he has failed to establish a prima facie case under the enablement
requirement of the first paragraph of § 112.
We will also not sustain the ground of rejection under 35 U.S.C. § 102 (answer, pages 4 and
7-8) or the grounds of rejection under 35 U.S.C. § 103 (answer, pages 5-6 and 8-9), all of which are
based on Chang et al. The claims on appeal, as represented by claim 1, are drawn to a composition3
comprising at least a doped bulk semiconductor material which has at least the specified structural
3The references relied on by the examiner are listed at page 2 of the answer. A discussion of
Willardson et al. is not necessary to our decision.
- 2 -
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007