Appeal No. 1998-2941 Page 36
Application No. 08/061,985
Reexamination Control No. 90/003,682
the burden falls on the appellants to present persuasive
arguments, supported by suitable proofs where necessary, that
one skilled in the art would be able to make and use the
claimed invention using the disclosure as a guide. See In re
Brandstadter, 484 F.2d 1395, 1406, 179 USPQ 286, 294 (CCPA
1973). In making the determination of enablement, the
examiner shall consider the original disclosure and all
evidence in the record, weighing evidence that supports
enablement against evidence that the specification is not12
enabling.
Thus, the dispositive issue is whether the appellants'
disclosure, considering the level of ordinary skill in the art
as of the date of the appellants' application, would have
enabled a person of such skill to make and use the appellants'
invention as set forth in claims 20-27 and 46/20 without undue
12The appellants may attempt to overcome the examiner's
doubt about enablement by pointing to details in the
disclosure but may not add new matter. The appellants may
also submit factual affidavits under 37 CFR 1.132 or cite
references to show what one skilled in the art knew at the
time of filing the application.
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