Appeal No. 1997-0142
Application No. 08/373,721
first paragraph of 35 U.S.C. § 112 “as failing to provide a
description which will enable one to make and use the
invention without undue experimentation” (answer, page 4 in
combination with page 6).
Claims 1 through 8 and 10 through 20 stand finally
rejected under 35 U.S.C. § 103 as being unpatentable over
Farmer in view of Navratil.1
We cannot sustain either of the above noted rejections.
We find nothing in the comments made by the examiner in
the answer concerning her section 112 rejection which supports
her proposition that the here claimed invention offends the
enablement (or for that matter the written description)
requirements of this statute. As correctly indicated by the
appellant in the brief, the examiner has simply failed to
carry her burden of coming forward with evidence or rationale
which establishes a prima facie case of nonenablement (or lack
of written description). Indeed, many of the concerns
1Contrary to the final rejection, the answer reflects that
claims 1 through 20 (rather than just claims 1 through 8 and
10 through 20) are included in the section 103 rejection
before us. This inconsistency need not be resolved in light
of our disposition of the subject appeal.
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