Appeal No. 1998-1224
Application No. 08/465,077
of the respective positions of the examiner and the
appellant, we agree with appellant that the examiner has
failed to establish noncompliance with any of the
provisions of 35 U.S.C. § 112, first paragraph.
Accordingly, we cannot sustain the rejection at issue.
The rejection is framed in language which appears to
focus upon the written description requirement of 35
U.S.C. § 112. On the other hand, appellant interprets
the rejection as translating into an issue of enablement.
In either case, it is the examiner who has the burden of
persuasion to establish noncompliance with the provisions
of 35 U.S.C. § 112. In this regard, see In re Edwards,
568 F.2d 1349, 1354, 196 USPQ 465, 469 (CCPA 1978) as to
the written description requirement; and In re Marzocchi,
439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971) as
to the enablement requirement. We find that the examiner
has failed to provide persuasive reasons to support the
rejection at issue.
The examiner merely asserts that there is no written
disclosure of the terminal etch rate, as claimed, in a
generic sense, and that that particular terminal etch
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