Appeal No. 1997-1873
Application 08/300,855
disclose that the method for determining the steady state operation of an engine according to the
invention is part of a larger diagnosis method. Appellant points to page 8, lines 5 through 17, of the
specification which is expressly states that the first step of the diagnosis of an engine is to determine
whether the engine is under a steady state operation.
In order to comply with the enablement provision of 35 U.S.C. § 112, first paragraph, the
disclosure must adequately describe the claimed invention so that the artisan could practice it without
undue expermentation. In re Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 303 (CCPA 1974);
In re Brandstadter, 484 F.2d 1395, 1404, 179 USPQ 286, 293 (CCPA 1973); and In re Gay, 309
F.2d 769, 774, 135 USPQ 311, 316 (CCPA 1962). If the Examiner had a reasonable basis for
questioning the sufficiency of the disclosure, the burden shifted to the Appellant to come forward with
evidence to rebut this challenge. In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA
1973), cert. denied, 416 U.S. 935 (1974); In re Brown, 477 F.2d 946, 950, 177 USPQ 691, 694
(CCPA 1973); and In re Ghiron, 442 F.2d 985, 992, 169 USPQ 723, 728 (CCPA 1971).
However, the burden was initially upon the Examiner to establish a reasonable basis for questioning the
adequacy of the disclosure. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA
1982); In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976); and In re
Armbruster, 512 F.2d 676, 677, 185 USPQ 152, 153 (CCPA 1975).
Upon our review of the specification, we find that the disclosure would have adequately
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