Appeal No. 1996-2961
Application No. 08/342,827
We consider first the examiner's rejection of claims 15,
16, 23 and 25 under 35 U.S.C. § 112, first paragraph.
According to the examiner, "the disclosure is enabling only
for claims limited having hollow yards [sic, yarns]
predominate on the paper carrying side of the fabric" (page 4
of Answer). The examiner goes on to say at page 5 of the
Answer that "[t]he hollow yarns predominating the paper side
of the fabric appears to be an essential feature of the
invention as disclosed in the specification."
It is well settled that the examiner has the initial
burden of establishing lack of enablement by setting forth
compelling reasoning or objective evidence that one of
ordinary skill in the art would not be able to practice the
claimed invention in light of the supporting specification.
In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563
(CCPA 1982); In re Marzocchi,
439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). In the
present case, the examiner has not satisfied her burden of
demonstrating that one of ordinary skill in the art would be
unable to make a wet press felt comprising a base fabric
including a first system of hollow, synthetic monofilament
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