Appeal No. 1996-3457
Application 08/200,595
application.2
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the sole ground of rejection advanced on appeal: claims 12 through 15 and 17 are rejected
under 35 U.S.C. § 112, first paragraph, as failing to provide an enabling disclosure (answer, pages 3-
5). 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 Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971). It is further well
settled that “[a]n inventor need not . . . explain every detail [of the invention] since he is speaking to
those skilled in the art. What is conventional knowledge will be read into the disclosure. Accordingly,
an applicant’s duty to tell all that is necessary to make or use varies greatly depending upon the art to
which the invention pertains” (emphasis supplied). In re Howarth, 654 F.2d 103, 105, 210 USPQ
689, 691 (CCPA 1981). However, if appellants choose “to rely upon general knowledge in the art to
render [their] disclosure enabling, then the burden rests upon [them] to establish that those of ordinary
skill in the art can be expected to possess or know where to obtain this knowledge.” Howarth, 654
F.2d at 107, 210 USPQ at 693.
The examiner has taken the position that the specification “does not contain any description of
the cracking process” and “fails to provide even minimal process steps and conditions” (answer, page
3). Appellants rely, inter alia, on the disclosure in their specification that bayerite and eta alumina are
used in catalysts for hydrocarbon cracking processes, citing EP 0 385 246, and other exemplification
See the amendments of July 14, 1995 (Paper No. 13), March 9, 1995 (Paper No. 9) and October2
24, 1994 (Paper No. 6).
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