Appeal No. 1998-2288
Application 08/600,150
specification and working examples, would not be able to
determine which metal oxides within the scope of the claims
work to pigment or color the substance to be colored (Brief,
page 10).
To be enabling, the specification must teach those
skilled in the art how to make and use the full scope of the
claimed invention without “undue experimentation.” In re
Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993). When rejecting a claim under the enablement
requirement of section 112, the examiner bears the initial
burden of presenting a reasonable explanation as to why it is
believed that the scope of protection provided by the claim is
not adequately enabled by the description of the invention
provided in the specification, including providing sufficient
reasons for doubting any assertions in the specification as to
the scope of enablement. See Wright, supra; In re Marzocchi,
439 F.2d 220, 224, 169 USPQ 367, 369-70 (CCPA 1971).
We agree with appellants that the examiner has provided
no reasonable basis for doubting the enablement provided in
the application specification. The examiner has concluded
that it would have required undue experimentation to practice
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