Appeal No. 97-2626
Application 08/234,502
A nonenablement rejection under section 112, first
paragraph is appropriate where the written description fails
to teach those in the art to make and use the invention as
broadly as it is claimed without undue experimentation. In re
Cortright, 165 F.3d 1353, 1356, 49 USPQ2d 1464, 1466 (Fed.
Cir. 1999). The test is not whether any experimentation is
necessary, but whether, if experimentation is necessary, it is
undue. In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219
(CCPA 1976).
The examiner has the initial burden to establish a
reasonable basis to question the enablement provided for the
claimed invention. In re Wright, 999 F.2d 1557, 1562, 27 USPQ
1510, 1513 (Fed. Cir. 1993). The examiner must “explain why
it doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions of its own
with acceptable evidence or reasoning which is inconsistent
with the contested statement.” In re Marzocchi, 439 F.2d 220,
224, 169 USPQ 367, 370 (CCPA 1971).
Based on the evidence before us, the examiner has failed
to establish a reasonable basis to question the enablement
provided for the claimed invention. Specifically, the
examiner has failed to demonstrate that undue experimentation
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