Appeal No. 1998-1827 Page 8
Application No. 08/644,932
of various elements of the claimed embodiment." However, the
examiner has not convincingly explained why, under the facts
of the present case, the original disclosure, including
original claim 18, fails to describe that subject matter which
is recited in the appealed claims. The examiner has not
established that the application, as originally filed, would
not have reasonably conveyed to one of ordinary skill in the
art that as of the filing date of the application, appellants
were in possession of the claimed subject matter (see, e.g.,
specification, pages 3-16, the examples presented and original
claim 18).
Moreover, for a proper rejection under the enablement
provision of 35 U.S.C. § 112, it is incumbent upon the
examiner to provide, in the first instance, factual evidence
and/or scientific reasoning that one of ordinary skill in the
art would be required to resort to undue experimentation to
practice the invention as defined by the scope of the claims.
See In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561,
563-564 (CCPA 1982). In the present case, the examiner has
presented no such persuasive evidence or reasoning which
supports the conclusion that a skilled artisan would be unable
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