Appeal No. 1996-2809
Application No. 08/399,961
need not be set forth in the written specification if the
skill in the art is such that the disclosure enables one to
make [and practice] the invention.” In re Gaubert, 524 F.2d
at 1226, 187 USPQ at 667. Accordingly, we agree with
appellants that the examiner on this record has not
established a prima facie case of unpatentability within the
meaning of 35 U.S.C. 112, first paragraph. In re Marzocchi,
439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971)(the examiner
has the initial burden of producing reasons that substantiate
a rejection based on lack of enablement).
We turn next to the Section 103 rejections of claims 1
through 20. The examiner takes the position that Saprokhin
essentially describes the electrochemical cell recited in
independent claim 1 except for an anode hanger and an outer
gas separator positioned equidistance between the claimed
anode assembly and the claimed cathode. The examiner then
relies on Tricoli to establish obviousness of incorporating
the anode hanger and the particularly positioned outer gas
separator in the electrochemical cell described in Saprokhin.
The remaining references are relied upon to show obviousness
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