Appeal No. 1998-2151
Application No. 08/580,823
Reference is made to the briefs and the answers for the
respective positions of the appellant and the examiner.
OPINION
The lack of enablement rejection is reversed as to claims
9 and 10, and is sustained as to claims 2 through 8 and 11.
As indicated supra, the examiner’s reasoning for finding
lack of enablement pertains to the more narrow claims 2
through 8 and 11, and not to the broad claims 9 and 10. The
Court clearly stated in In re Doyle, 482 F.2d 1385, 1392, 179
USPQ 227, 232 (CCPA 1973), the burden shifts to appellant to
prove enablement only after the examiner has successfully1
mounted a challenge to the adequacy of the disclosure for the
claimed invention. For this reason, the rejection of claims 9
and 10 is reversed because the examiner has not provided us
with any reasoning for finding lack of enablement as to claims
9 and 10.
Turning to the rejection of claims 2 through 8 and 11, we
are of the opinion that the examiner has mounted a successful
1Even if the burden had shifted to appellant, we find
that pages 197 through 199 of Appendix D to the brief provide
an adequate explanation of Q.
4
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