Appeal No. 1998-3035
Application No. 08/580,036
are also of the view that the evidence relied upon and the
level of skill in the particular art would not have suggested
to one of ordinary skill in the art the obviousness of the
invention as set forth in claims 6 and 20-24. Accordingly, we
affirm-in-part.
We consider first the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection of claims 1-26 for lack of enablement.
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 experimentation. In re Scarbrough,
500 F.2d 560, 566, 182 USPQ 298, 305 (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 has a reasonable basis for
questioning the sufficiency of the disclosure, the burden
shifts to Appellants 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
4
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