Appeal No. 1997-3973
Application No. 08/366,561
Reference is made to the briefs and the answer for the
respective positions of the appellants and the examiner.
OPINION
All of the rejections are reversed.
Turning first to the lack of enablement rejection,
appellants argue (Reply Brief, page 2) that:
By any measure, the inclusion of Figs. 5 and 6A-
6D detracts in no way from the admittedly useful,
clear, concise, and sufficient disclosure presented
in connection with Figs. 1-4. The Examiner has
presented no example of how anything in the disputed
figures obscures the remaining disclosure or “the
actual claimed invention.”
We agree with appellants’ argument. No matter the basis for a
lack of enablement rejection, the burden of proof initially
lies with the examiner to make a sufficient showing. Stated
differently, the examiner has to provide more than a mere
statement that the additional figures “obfuscate the claimed
invention.” In view of the lack of any showing by the
examiner, we agree with appellants that too much disclosure,
as opposed to too little disclosure, does not detract from the
disclosure “presented in connection with Figs. 1-4.” Thus,
the lack of enablement rejection of claims 1 through 4, 6
through 16, 18, 19, 21 through 24 and 26 through 29 is
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