Appeal No. 96-4162
Application 08/313,901
1229, 1232, 212 USPQ 561, 563-64 (CCPA 1982). In calling into question the
enablement of the appellant’s disclosure, the examiner has the initial burden of advancing
acceptable reasoning inconsistent with enablement. Id.
In determining that the specification is non-enabling, the examiner has noted that
the disclosure of the method of forming the hollow interior of the container is lacking but
has not advanced a reason why one of ordinary skill in the art would not have known how to
form a hollow article using the invention disclosed in the appellant’s specification without
undue experimentation. The issues involved with the molding of a hollow article are
straight-forward and predictable. Although the examiner has pointed out that the numerous
options available for forming the hollow may yield different results, the examiner has not
advanced any explanation as to why one of ordinary skill in the molding art would not have
been able to (1) recognize the need for forming a hollow region in the article, (2)
contemplate options and their various consequences and (3) select from among these
options without undue experimentation to mold a hollow article possessing the desired
characteristics according to the disclosed invention, i.e., free of parting lines on the frusto-
conical sealing surface.
Accordingly, we shall not sustain the standing rejection of claims 1 through 6 under
35 U.S.C. § 112, first paragraph, as being based on a non-enabling specification.
Rejection under 35 U.S.C. § 101
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