Appeall No. 1998-1398 Page 14
Application No. 08/400,637
is that experimentation not be unduly extensive. Atlas Powder
Co. v. E. I. Du Pont de Nemours & Co., 750 F.2d 1569, 1576,
224 USPQ 409, 413 (Fed. Cir. 1984). “[T]he PTO bears an
initial burden of setting forth a reasonable explanation as to
why it believes that the scope of protection provided by that
claim is not adequately enabled by the description of the
invention provided in the specification of the application
....” In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510,
1513 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220,
223-24, 169 USPQ 367, 369-70 (CCPA 1971)). With these
principles in mind, we consider the examiner’s rejection.
The examiner alleges, "[t]he specification fails to
provide an enabling disclosure for the step of automatically
generating a three way call as stated by claims 27 and 29 and
the steps of automatically terminating a path of the three
way call as stated by claims 28 and 30. (Examiner's Answer at
6.) The appellants make the following argument.
[T]he claimed subject matter is described in the
specification in such a way as to enable one skilled
in the art to which it pertains to make and/or use
the invention. The applicants submit that the
specification adequately describes the step of
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