Appeal No. 1999-0086
Application No. 08/612,820
us, that Appellants’ specification in this application
describes the claimed invention in a manner which complies
with the requirements of 35 U.S.C. § 112. We are also of the
view that the disclosure of the Niwa reference fully meets the
invention as recited in claims 1 and 18. Accordingly, we
affirm-in-part.
We first consider the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection of the appealed claims for lack of
enablement. In order to comply with the enablement provision
of 35 U.S.C. § 112, first paragraph, the disclosure must
adequately describe the claimed invention so that the artisan
could practice it without undue experimentation. In re
Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 305 (CCPA 1974);
In re Brandstadter, 484 F.2d 1395, 1404, 179 USPQ 286, 293
(CCPA 1973); and In re Gay, 309 F.2d 769, 774, 135
USPQ 311, 316 (CCPA 1962). If the Examiner has a reasonable
basis for questioning the sufficiency of the disclosure, the
burden shifts to Appellants to come forward with evidence to
rebut this challenge. In re Doyle, 482 F.2d 1385, 1392, 179
USPQ 227, 232 (CCPA 1973), cert. denied, 416 U.S. 935 (1974);
In re Brown, 477 F.2d 946, 950, 177 USPQ 691, 694 (CCPA 1973);
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