Appeal No. 1997-0601
Application 08/161,878
in the art without undue experimentation. See United States
v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223
(Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re
Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
Thus, the dispositive issue is whether Appellants’
disclosure, considering the level of ordinary skill in the art
as of the date of Appellants’ application, would have enabled
a person of such skill to make and use Appellants’ invention
without undue experimentation. The threshold step in
resolving this issue is to determine whether the Examiner has
met his burden of proof by advancing acceptable reasoning
consistent with enablement requirement.
The Examiner asserts [answer, pages 3 to 4 and 6 to 8]
that “the back surface structure [in Figs... 4 and 5] would
recombine all minority carriers, and inject none. The
recombination would in turn prevent proper lateral thyristor
action. And at the least, applicant has not provided enabling
disclosure for such an arrangement ... ” [id. 4]. Appellants
argue at length [brief, pages 5 to 8 and reply brief, pages 2
to 4] against the Examiner’s position. Appellants explain
[id. 6 and 7] the mechanics of the flow of the carriers among
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