Appeal No. 1997-0595 Page 7
Application No. 08/154,911
Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993) (examiner must provide a reasonable explanation as
to why the scope of protection provided by a claim is not
adequately enabled by the disclosure). In this case, the
examiner has not alleged any basis to question the enablement
provided for the claimed invention. Since the examiner has
not met his threshold burden by advancing acceptable reasoning
inconsistent with enablement, the decision of the examiner to
reject claims 13 to 17 under 35 U.S.C. § 112, first paragraph,
is reversed.
Turning next to the examiner's rejection based upon the
definiteness requirement set forth in the second paragraph of
35 U.S.C. § 112, we note that claims are considered to be
definite, as required by the second paragraph of 35 U.S.C. §
112, when they define the metes and bounds of a claimed
invention with a reasonable degree of precision and
particularity. See In re Venezia, 530 F.2d 956, 958, 189 USPQ
149, 151 (CCPA 1976). In our view, the metes and bounds of
claims 13 to 17 would be understood by one skilled in the art
with a reasonable degree of precision and particularity. The
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