Appeal No. 98-2810
Application 08/471,457
OPINION
In reaching our decision in this appeal, we have given careful consideration to appellant’s
specification and claims, to the declaration evidence and product analysis report supplied by appellant,
and to the respective positions articulated by appellant and the examiner. As a consequence of our
review, we have made the determinations which follow.
We turn first to the examiner's rejection of claim 19 under 35 U.S.C. § 112, first paragraph, as
being based on a non-enabling disclosure. It is by now well-established law that the test for compliance
with the enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether the disclosure, as
filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed
invention without undue experimentation. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971). See also In re Scarborough, 500 F.2d 560, 566, 182 USPQ 298, 303 (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
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