Appeal No. 2001-0378 Page 11
Application No. 08/873,876
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. This the examiner has not done. In fact, the
examiner has not provided any cogent reasoning as to why the
appellant's disclosure would not have enabled a person of ordinary
skill to make and use the claimed invention without undue
experimentation. Instead, the examiner (answer, p. 3) questions
how the claimed range of the resiliency index was determined
and that only a single example of a suitable material was
provided.
In our opinion the examiner has not met his burden of proof by
advancing acceptable reasoning inconsistent with enablement for the
following reasons.
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