Appeal No. 96-0462
Application 08/165,513
(Fed. Cir. 1988), citing Hybritech, Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed.
Cir. 1986). The Patent and Trademark Office must support a
rejection for lack of enablement with reasons.
In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70
(CCPA 1971). Once that is done, the burden shifts to the
applicant to rebut this conclusion by offering evidence to
prove that the disclosure in the specification is enabling.
In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA
1973).
The Examiner alleges that "continuous thin films of ITO
with high surface resistivity are not known in the liquid
crystal art" (EA4). Appellants argue that the Examiner "does
not cite any authority for that proposition, and it is clearly
based solely on the Examiner's speculation" (Br11) and that
"[a]t no time has the Examiner cited any authority to support
the contention that one skilled in the art would not known how
to prepare an ITO film with a surface resistivity of 1 MS/G"
(Br12). The Examiner responds that he "has provided evidence
in the form of Matsumoto et al. and Kamijo et al." (EA8).
The Examiner states that "Kamijo et al. demonstrate the
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