Appeal No. 1995-1703
Application 07/897,304
As for the enablement requirement, the dispositive issue
is whether the appellants’ disclosure, considering the level
of ordinary skill in the art as of the date of the
application, would have enabled a person of such skill to make
and use the appellants’ invention without undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563-64
(CCPA 1982). In calling into question the enablement of the
disclosure, the examiner has the initial burden of advancing
acceptable reasoning inconsistent with enablement. Id.
In short, the examiner has not advanced any cogent line
of reasoning as to why the claim limitations in question might
pose an enablement problem. Instead, the examiner (see pages
7 through 15 in the main answer) appears to have attempted to
turn the tables on the appellants by bemoaning their failure
to submit persuasive evidence of enablement. As indicated
above, however, the initial burden in this regard falls on the
examiner, not the appellants.
Hence, we shall not sustain the standing 35 U.S.C. § 112,
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