Appeal No. 1997-3655
Application No. 08/351,136
polymers the examiner describes with the undefined
characterization of being “substantially or radically
different from those enabled.”
According to the examiner, his rationale in making the
nonenablement rejection under consideration is supported by In
re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973).
This is incorrect. As properly indicated by the appellants,
the nonenablement issue of In re Brandstadter related to all
embodiments encompassed by the rejected claims and not to
“suspected” embodiments which are “assumed” to be nonenabled
as the examiner has done in this case.
In essence, rather than carry his initial burden of
establishing a prima facie case of nonenablement, the examiner
has inappropriately leaped to an unsupported conclusion of
nonenablement based upon his unfounded suspicions and
assumptions. In this way, the examiner inappropriately has
required the appellants to carry the initial burden of proving
that the here claimed subject matter is enabled. As
previously indicated, it is the initial burden of the examiner
to advance acceptable reasoning inconsistent with enablement.
In re Strahilevitz, id. Further, the analytical framework by
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