Appeal No. 1997-1594
Application No. 08/247,090
under the first paragraph of 35 U.S.C. § 112 on the grounds of
lack of enablement. When rejecting a claim under the
enablement requirement of section 112, the PTO bears the
initial burden of setting forth a reasonable explanation as to
why it believes the scope of protection provided by the
claimed subject matter is not adequately enabled by the
description of the invention provided in the specification of
the application. This includes providing sufficient reasons
for doubting any assertions in the specification as to the
scope of enablement. If this burden is met, the burden then
shifts to the applicant to provide suitable proof that the
specification is enabling. See In re Wright, 999 F.2d 1557,
1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Marzocchi,
439 F.2d 220, 223, 169 USPQ 367, 369 ( CCPA 1971). Contrary
to the requirements of the statute, the examiner has provided
ample rationale that the claimed subject matter is fully
enabled. See Answer, pages 4 and 8-10. The examiner’s
position is not that the claims are unsupported by the
description of the invention in the specification, but that
the claimed process does not include critical recited
features.
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