Appeal No. 1999-0220 Page 7
Application No. 08/540,323
disclosure and to back up assertions of its own with
acceptable evidence or reasoning which is inconsistent
with the contested statement. Otherwise, there would be
no need for the applicant to go to the trouble and
expense of supporting his presumptively accurate
disclosure.
In re Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
Thus, the dispositive issue is whether the appellant's
disclosure, considering the level of ordinary skill in the art
as of the date of the appellant's application, would have
enabled a person of such skill to make and use the appellant's
invention without undue experimentation. The threshold step
in resolving this issue as set forth supra is to determine
whether the examiner has met the burden of proof by advancing
acceptable reasoning inconsistent with enablement. This the
examiner has not done.
The examiner's rejection (answer, pp. 3-4) states that
[t]he arguments and declaration filed January 10,
1997 and the declaration filed October 21, 1997 indicate
that the critical part of the invention is that the
braking surface causes deformation of the ram. The
originally filed specification states that the ram is not
deformed by the braking surface (page 4, lines 17-18 and
page 5, line 8). The originally filed specification
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