Appeal No. 2000-0181
Application No. 08/929,287
claimed invention without undue experimentation. Nat.
Recovery Technologies Inc. v. Magnetic Separation Sys. Inc.,
166 F.3d 1190, 1196, 49 USPQ2d 1671, 1676 (Fed. Cir. 1999).
The examiner bears the initial burden of making out a prima
facie case by advancing acceptable reasoning inconsistent with
enablement, In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ
561, 563 (CCPA 1982). Although the specification need not
disclose what is well known in the art, the examiner may
reject the claims if it is reasonable to conclude that one
skilled in the art would be unable to carry out the claimed
invention. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331,
1332 (Fed. Cir. 1991).
We do not consider that a prima facie case of
nonenablement has been established here. Unlike the examiner,
we do not view the appellants’ disclosure as indicating that
they are "uncertain what structure results in limiting
rotation of the shaft to a substantially constant speed"
(answer, pages 4 to 5). Rather, appellants state on page 2,
lines 2 to 12, that the relatively constant speed is achieved
in part by providing an axial thrust bearing which acts as a
friction brake; their uncertainty is that they admit that they
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