Appeal No. 1998-2496
Application No. 08/714,831
deemed as non-enabling. We further agree with appellants that the examiner has not met
this initial burden of setting forth evidence or a line of reasoning why the invention, as
claimed, is not enabling. The examiner maintains that the specification “gives no effective
guidance on the critical ranges for effectiveness for the various features such as, D , D ,s d
and h . Certainly there are values for these that will not produce an effective, workable
d
CSS device.” (See final rejection at page 2.) But the examiner provides no rationale as to
why one skilled in the art would require more than that provided in the specification
concerning the process of making the disks. The mere fact that the range is large and the
examiner believes that at the periphery of the range the device may not be workable or
effective, in our view, is not a measure of enablement. The examiner maintains that “[t]he
extreme overall ranges stated for the various features are such that undue and extensive
testing would be required to produce a workable system.” (See answer at page 4). We
disagree with the examiner. First, we find that the example set forth in the specification
provides an adequate starting point for the skilled artisan to begin any testing. The
knowledge and skill of the artisan would have been such that the analysis of the desired
resulting characteristics of the disk would have directed the artisan as to the appropriate
modifications to be made in its manufacture. Second, we find that the examiner's rejection
is directed more toward the breadth of the claims rather than to enablement. If the
examiner believes that the lower range of the values is such as “reading on a ‘flat’ disk”
4
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