Appeal No. 1997-1190
Application No. 08/427,972
specification teach those skilled in the art to make and use
the invention without "undue experimentation." In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). That
some experimentation may be required is not fatal; the issue
is whether the amount of experimentation required is "undue."
Id. at 736-37, 8 USPQ2d at 1404.
Moreover, in rejecting a claim for lack of enablement, it
is well settled that the examiner has the initial burden of
producing reasons that substantiate the rejection. See In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA
1982); In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370
(CCPA 1971). Once this is done, the burden shifts to the
appellant to rebut this conclusion by presenting evidence to
prove that the disclosure in the specification is enabling.
See In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA
1973), cert. denied, 416 U.S. 935 (1974); In re Eynde, 480
F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973).
Where different arts are involved in the invention, the
specification is enabling if it enables persons skilled in
each art to carry out the aspect of the invention applicable
to their specialty. In re Naquin, 398 F.2d 863, 866, 158 USPQ
-7-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007