Appeal No. 1998-2941 Page 37
Application No. 08/061,985
Reexamination Control No. 90/003,682
experimentation. The threshold step in resolving this issue
as set forth supra is to determine whether the examiner has
met his burden of proof by advancing acceptable reasoning
inconsistent with enablement. This the examiner has not done.
In this regard, we note that the specification refers to
aseptic packaging as being "preferable" and that said eggs
"should be aseptically packaged." Moreover, we note that it
is the function of the specification, not the claims, to set
forth the practical limits of operation of an invention. See
In re Johnson, 558 F.2d 1008, 1017, 194 USPQ 187, 195 (CCPA
1977).
For the reasons stated above, the decision of the
examiner to reject claims 20-27 and 46/20 under 35 U.S.C. §
112, first paragraph, is reversed.
New grounds of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new grounds of rejection.
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