Appeal No. 2000-1747
Application No. 08/784,237
written description does not convey with reasonable clarity to
one skilled in the art that appellant was in possession of the
invention as now claimed.
The initial burden of proof also rests with the examiner
to support a rejection for lack of enabling disclosure. See
In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993). “Although not explicitly stated in section 112,
to be enabling, the specification . . . must teach those
skilled in the art how to make and use the full scope of the
claimed invention ‘without undue experimentation’ [Citations
omitted]." Wright, 999 F.2d at 1561, 27 USPQ2d at 1513. We
determine that the examiner has not met this burden merely by
showing that one example in appellant’s specification contains
“results of a somewhat schematic field test” which vary
according to the user’s perception (see the specification,
page 5, lines 29-30; page 7, lines 10-16). We determine that
the examiner has not explained why this example would have
necessitated undue experimentation to practice the invention
as now claimed.
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