Appeal No. 1997-3870
Application No. 08/421,055
findings to support a legal conclusion of lack of enablement.2
Appellants’ specification, at page 27, ll. 10-22, does not
disclose that it is critical that the epoxy-polyesters be
crosslinked when used as dimensionally stable films but only
teaches crosslinked epoxy-polyesters as examples of thermoset
films. Additionally, as argued by appellants, the disclosure
teaches optional curing of films, although these films are in
combination with other components (specification, page 29, ll.
16-27).
For the foregoing reasons, we determine that the examiner
has not presented the underlying factual inquiries to support his
2 We again note the difference in the written description
and enablement requirements of section 112. See Vas-Cath, supra.
Although we determine that the examiner here has not met the
initial burden of establishing that the disclosure lacks
enablement, this does not mean that the claimed subject matter is
based on sufficient written description in the original
disclosure. In the event of further or continuing prosecution of
this application, the examiner and applicants should determine
whether the “written description” requirement of section 112 has
been fulfilled for the subject matter of claims 14, 15 and 30,
i.e., whether there is sufficient basis in the original
disclosure to reasonably convey to one of ordinary skill in the
art that applicants had possession of the subject matter of these
claims.
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