Appeal No. 1996-1288
Application No. 08/227,576
examiner has failed to carry his burden of establishing that
the rejection under consideration is proper under either
theory. In essence, we agree with the appellants that the
original disclosure of the subject specification including the
disclosure relating to “other impurities” would have conveyed
to an artisan that the appellants had possession on their
application filing date of a process for removal of compounds
which include unreacted compounds, namely, the claim 28
“unsulfonated organic phosphorous compounds”. In re Kaslow,
707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
Additionally, assuming the examiner’s concern regarding these
last mentioned compounds relates to the issue of enablement,
we point out that the examiner has failed to advance on this
appeal reasoning inconsistent with enablement as is his
burden. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ
561, 563 (CCPA 1982).
In light of the foregoing, we cannot sustain the
examiner’s section 112, first paragraph, rejection of claim
28.
We also cannot sustain the examiner’s section 112, second
paragraph, rejection of claim 24. On the record before us,
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