Appeal No. 97-1627 Page 12
Application No. 08/202,991
a prima facie case of non-enablement. We turn to his third
and last reason.
The examiner’s third reason for rejecting the claims
under 35 U.S.C. § 112, ¶ 1, follows.
The disclosure lists many different materials
for the magnetic and non-magnetic layers, states
that materials different from those listed could
also be used, states that each layer of the laminate
can be formed using a different material, states
that any number of layers can be used, states that
addition [sic] unspecified layers may be used in
unspecified locations, and lists very broad
numerical ranges for the layer thicknesses.
The disclosure presents so many alternatives
that it represents no guidance to one skilled in the
art. It really requires one skilled in the art to
extensively experiment with untold numbers of
combinations of materials, sizes for each element,
and configurations to determine some that will
actually work. (Final Rejection at 2-3.)
We observe that this reason satisfies the examiner’s
burden of establishing a prima facie case of non-enablement.
In response, the appellants came forward with argument. We
now consider their argument.
The appellants’ argument follows.
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