Appeal No. 1997-3655
Application No. 08/351,136
exposition of the opposing viewpoints expressed by the
appellants and by the examiner concerning the above noted
rejection.
OPINION
This rejection cannot be sustained.
It is well settled that the burden of proof lies upon the
Patent and Trademark Office in calling into question
enablement of an applicant’s disclosure. This burden requires
that the Patent and Trademark Office advance acceptable
reasoning inconsistent with enablement. Upon the advancement
of acceptable reasoning, the burden then shifts to the
applicant to show that one of ordinary skill in the art could
have practiced the claimed invention without undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563 (CCPA 1982).
In the case at bar, it is clear that the examiner has not
carried his initial burden of proof. In explaining his
rationale for making the rejection before us, the examiner
states that he “suspected that the claims cover structures
substantially or radically different from those enabled” and
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