Appeal No. 96-2808
Application 08/102,708
suggest the desirability of adding a mixture of t- amyl ethers to gasoline. The suggestion could only have
come from appellants disclosure. Accordingly, we find ourselves in agreement with appellants that the
examiner has failed to carry the burden of establishing a prima facie case of obviousness with respect to
the rejection of claim 38 over the combined teachings Bruderreck, Leum and Buc. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d at 1471-72, 223
USPQ at 787-88 (Fed. Cir. 1984). Therefore, the examiner’s rejection of claim 38 is reversed.
REJECTION UNDER 35 U.S.C. § 112
The examiner rejected claim 26 under 35 U.S.C. § 112, first paragraph, because appellants’
disclosure “is enabling only for claims limited to a hydrocarbon containing source stream from refinery
stream, such as still bottoms, which normally require substantial amounts of processing to achieve a valuable
product (the paragraph bridging pages 5 and 6 of the present specification) and hydrocarbon sources such
as natural gas, light napthas or even crude oil bottoms and residues (lines 24-32 of page 7 of the present
specification)” (answer: p. 3).
The examiner has the initial burden of establishing a lack of enablement based upon scientific
reasoning that the various hydrocarbon source streams exemplified in the present specification are not
sufficient to support the breadth of the appealed claim. See In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563-64 (CCPA 1982); In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA
1971). The test for determining compliance with the enablement requirement of the first paragraph of 35
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