Appeal No. 1998-2496
Application No. 08/714,831
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 34, mailed March 9, 1998) which incorporates the rejections made in
the final rejection for the examiner's reasoning in support of the rejections, and to the
appellants’ brief (Paper No. 33, filed December 30, 1997) and reply brief (Paper No. 35,
filed April 7, 1998) for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, and to the respective positions articulated by the
appellants and the examiner. As a consequence of our review, we make the
determinations which follow.
Appellants argue that the examiner has not set forth a prima facie case with
respect to both rejections under 35 U.S.C. § 112. (See brief at page 9.) Appellants argue
that the PTO is “required to assume that the specification complies with the enablement
provision of Section 112 unless it has ‘acceptable evidence or reasoning’ to suggest
otherwise.” (See brief at page 9, citing Gould v. Quigg, 822 F.2d 1074,
1
3 USPQ2d 1302 (Fed. Cir. 1987).) We agree with appellants that the PTO bears the
initial burden of supplying acceptable evidence or reasoning as to why the specification is
1We note that appellants do not provide a pinpoint cite to support this proposition, and we have
been unable to locate the specific quotation.
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