Appeal No. 1996-1253
Application 08/113,034
whether one reasonably skilled in the art could make or use the invention from the disclosures in the
patent coupled with information known in the art without undue
experimentation." United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223
(Fed. Cir. 1988), citing Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231
USPQ 81, 94 (Fed. Cir. 1986). The burden is initially upon the examiner to establish a reasonable
basis for questioning the adequacy of the disclosure. In re Angstadt, 537 F.2d 498, 504, 190 USPQ
214, 219 (CCPA 1976); and In re Armbruster, 512 F.2d 676, 678, 185 USPQ 152, 154 (CCPA
1975). It is well settled that the examiner has the initial burden of establishing lack of enablement by
compelling reasoning or objective evidence. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561,
563 (CCPA 1982); In re Armbruster, 512 F.2d 676, 677, 185 USPQ 152, 153 (CCPA 1975); In re
Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971).
In the instant case before us, the specification describes a method of detecting a playing time
and a residual time of a magnetic video tape. The method is described in relation to Figure 3 of the
disclosure, which shows a single signal (region "L") recorded on the tape. The examiner’s rejection
under § 112, first paragraph, is based on the assertion that one reasonably skilled in the art reading
appellant’s disclosure (which describes the method in relation to a single signal being on the magnetic
tape) would not reasonably understand how to apply the method of the claimed invention to a magnetic
tape having plural recorded signals thereon. We cannot agree with the examiner. We find that the
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