Appeal No. 96-1943
Application No. 08/147,008
It is well settled that the test regarding enablement is
whether the disclosure, as filed, is sufficiently complete to
enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation. See In re
Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 302 (CCPA 1974)
and In re Wands, 858 F.2d 731, 737 8 USPQ2d 1400, 1404 (Fed.
Cir. 1988). As a threshold matter, the examiner has the
initial burden of producing reasons that substantiate a
rejection based on lack of enablement. See In re Marzocchi,
439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971) and In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA
1982). Once this is done, the burden shifts to the appellants
to rebut this conclusion by presenting evidence to prove that
the disclosure is enabling. See In re Eynde, 480 F.2d 1364,
1370, 178 USPQ 470, 474 (CCPA 1973) and In re Doyle, 482 F.2d
1385, 1392, 179 USPQ 227, 232 (CCPA 1973), cert. denied, 416
U.S. 935 (1974).
Additionally, as the court in In re Gaubert, 524 F.2d
1222, 1226, 187 USPQ 664, 667 (CCPA 1975) set forth in quoting
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