Appeal No. 2001-0129
Application No. 09/035,655
enablement against evidence that the specification is not1
enabling.
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 his burden of proof by advancing
acceptable reasoning inconsistent with enablement.
In the instant case, the examiner, noting that the
appellant’s specification states that the pads being formed
are cotton based cellulosic fibers, states:
Cotton is well known to be a soft pliable fibrous
material. The examiner believes that in order to
make cotton rigid, some process must be applied to
the material. The specification does not disclose
any process for making cotton rigid or the amount of
rigidity inherent in the pad.
1The appellant may attempt to overcome the examiner's
doubt about enablement by pointing to details in the
disclosure but
may not add new matter. The appellant may also submit factual
affidavits under 37 CFR § 1.132 or cite references to show
what one skilled in the art knew at the time of filing the
application.
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