Appeal No. 1996-3535
Application No. 08/236,006
It is well settled that the Patent and Trademark Office
must carry its burden of questioning enablement by advancing
acceptable reasoning inconsistent with enablement. In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA
1982). The examiner has advanced no such reasoning. Contrary
to the examiner’s argument, the criteria for practicing the
here claimed invention is plainly taught in the appellants’
specification disclosure and further, is explicitly set forth
in the appealed claims. Specifically, this criteria involves
the shifting of Zeta potential by a particular amount, and the
examiner has proffered no evidence or reasoning that the
appellants’ disclosure would not enable an artisan with
ordinary skill from using this criteria of Zeta potential
shift in order to practice the here claimed invention. On the
other hand, the appellants have submitted evidence (e.g., see
the Dumas affidavit filed December 5, 1994) which militates
against the examiner’s nonenablement position.
Under these circumstances, it is our determination that
the examiner has failed to carry his burden of proof in
calling into question the enablement of the appellants’
disclosure. In essence, the examiner has demanded without
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007