Appeal No. 2000-0210 Page 8
Application No. 08/893,906
enablement against evidence that the specification is not2
enabling.
Thus, the dispositive issue in this issue on appeal is
whether the appellants' disclosure, considering the level of
ordinary skill in the art as of the date of the appellants'
application, would have enabled a person of such skill to make
and use the appellants' invention without undue
experimentation. The threshold step in resolving this issue as
set forth supra is to determine whether the examiner has met
his burden of proof by advancing acceptable reasoning
inconsistent with enablement.
In our opinion the examiner has not met his burden of
proof by advancing acceptable reasoning inconsistent with
enablement for the following reasons.
2The appellants may attempt to overcome the examiner's
doubt about enablement by pointing to details in the
disclosure, but may not add new matter. The appellants may
also submit factual affidavits under 37 CFR § 1.132 or cite
references to show what one skilled in the art would have
known at the time of filing the application.
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