Appeal No: 1997-1820
Application No: 08/313,941
support for the unpredictability of the catalysts required by
the claims.
"When rejecting a claim under the enablement requirement
of section 112, the PTO bears an initial burden of setting
forth a reasonable explanation as to why it believes that the
scope of protection provided by that claim is not adequately
enabled by the description of the invention provided in the
specification of the application; this includes, of course,
providing sufficient reasons for doubting any assertions in
the specification as to the scope of enablement." In re
Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993).
The specification need not contain an example if the
invention is otherwise disclosed in such a manner that one
skilled in the art will be able to practice it without an
undue amount of experimentation. In re Borkowski, 422 F.2d
904, 908, 164 USPQ 642, 645(CCPA 1970).
The examiner has provided not established an objective
reason why one skilled in the art would have to engage in
undue experimentation to practice the claimed invention with
any of the claimed and disclosed metals. The examiner has not
established that the art involved in applicant's invention is
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