Appeal No. 1997-3697
Application 08/273,455
With respect to the ground under 35 U.S.C. § 112, first paragraph, enablement requirement, it
is well settled that under § 112, first paragraph, the examiner has the burden of providing a reasonable
explanation, supported by the record as a whole, why the assertions as to the scope of objective
enablement set forth in the specification are in doubt, including reasons why the description of the
invention in the specification would not have enabled one of ordinary skill in this art to practice the
claimed invention without undue experimentation, in order to establish a prima facie case under the
enablement requirement of the first paragraph of § 112. In re Wright, 999 F.2d 1557, 1561, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367,
369-70 (CCPA 1971). Thus, in order to make out a prima facie case under this section of the statute,
more is required than an expression of doubt that the information in appellants’ specification would not
have enabled one of ordinary skill in this art to make the claimed apparatus encompassed by the
appealed claims. See generally, In re Mayhew, 481 F.2d 1373, 179 USPQ 42, 45 (CCPA 1973)
(CCPA 1976)(“We believe the rejection could have been proper only if evidence or reasoning had
been advanced which would indicate that locating the cooling means at a point other than adjacent the
exit point for the strip would not achieve the desired result of lowering the temperature of the spelter at
that point. A statement merely doubting that this can be done is not enough.”). We must agree with
appellants (brief, page 5) that the examiner (answer, page 3, citing the Office action of December 6,
1994 (Paper No. 5)) has not made out a prima facie case that the specification would not have
enabled one of ordinary skill in this art to make the claimed apparatus without undue experimentation at
the time the application was filed. We find that the examiner merely alleges that undue experimentation
would be required to practice the claimed invention without reasonable explanation, supported by the
record as a whole, why this would be so. Indeed, we find that appellants submitted
No. 10). While the examiner has not specifically withdrawn this ground of rejection, appellants note in
the brief their belief that the “rejection has been obviated by the submission of a Terminal Disclaimer”
(Paper No. 12, page 4) and the examiner did indicate in the answer that appellants’ statement of the
issues on appeal is correct (page 2). Appellants did file a terminal disclaimer along with the brief on
December 18, 1995 (Paper No. 13). While we cannot find in the record where the examiner
acknowledged receipt of this document and communicated the effect thereof on the ground of rejection,
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