Appeal No. 98-2769
Application 08/485,960
(CCPA 1974). Moreover, in rejecting a claim for lack of enablement, it is also well settled that the
examiner has the initial burden of advancing acceptable reasoning inconsistent with enablement in order
to substantiate the rejection. See In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563-64
(CCPA 1982); In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971). Once this
is done, the burden shifts to 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, 179 USPQ 227 (CCPA
1973); In re Eynde, 480 F.2d 1364, 1371, 178 USPQ 470, 474-75 (CCPA 1973).
In the case before us, after reviewing the disclosure on page 13, lines 1-19, of appellants’
specification and the Phipps patent incorporated therein by reference, we are of the opinion that the
examiner has not met his burden of advancing acceptable reasoning inconsistent with enablement.
While the examiner seems to be of the view that the secondary electrode referred to in claims 9 and 19
on appeal is of the exact same structure and operation in each of the plurality of drug-containing units of
claim 9 and in each of the plurality of “different classes of therapeutic agent sources” of claim 19 on
appeal (i.e., that the secondary electrode in each of the drug-containing units or therapeutic agent
sources generates exactly the same amount of competitive co-ions), our understanding of appellants’
disclosure leads us to a contrary conclusion. Even if the structure of the secondary electrode in each of
appellants’ drug-containing units or therapeutic agent sources is generally the same, in our opinion, it
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