Appeal No. 98-3269
Application No. 08/703,266
enabling disclosure. In addition, the appealed claims stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Georges in view of Wada.
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner's
rejections.
We consider first the rejection of the appealed claims
under 35 U.S.C. § 112, first paragraph. In essence, it is the
examiner's position that appellants' specification does not
provide enabling support for the breadth of the subject matter
claimed. In the words of the examiner, the specification
"does not reasonably provide enablement for the myriad [of]
monomer combinations and process conditions within the broad
language of the claims" (page 9 of Answer). The examiner
refers to the fact that "the working examples set forth only
three monomers and one crosslinking monomer to support claims
which read on thousands of monomers, crosslinking monomers and
unlimited combinations thereof" (page 10 of Answer).
It is well settled that the examiner bears the initial
burden of establishing lack of enablement by compelling
reasoning or objective evidence. In re Strahilevitz, 668 F.2d
-3-
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