Appeal No. 1998-2265
Application No. 08/498,482
recrystallizing such that a fined grained alloy with
less than 10 µm grains is required. [Id. at p. 4.]
We cannot agree with the examiner.
It is important to emphasize that the initial burden of
establishing a prima facie case of non-enablement under the
first paragraph of 35 U.S.C. § 112 rests on the examiner. In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). The predecessor of our reviewing court has stated
as follows:
[A] specification disclosure which contains a
teaching of the manner and process of making and
using the invention in terms which correspond in
scope to those used in describing and defining the
subject matter sought to be patented must be taken
as in compliance with the enabling requirement of
the first paragraph of Section 112 unless there is
reason to doubt the objective truth of the
statements contained therein which must be relied on
for enabling support.
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA
1971). Thus, it is only upon the advancement of acceptable
reasoning on the part of the examiner that the burden of
proving enablement shifts to the appellants. In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA
1982). Here, the examiner has not met the threshold initial
burden of proof.
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