Appeal No. 1999-0465 Application No. 08/351,548 polymers the examiner describes with the undefined characterization of being “substantially or radically different from those enabled.” According to the examiner, his rationale in making the nonenablement rejection under consideration is supported by In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973). This is incorrect. As properly indicated by the appellants, the nonenablement issue of In re Brandstadter related to all embodiments encompassed by the rejected claims and not to “suspected” embodiments which are “assumed” to be nonenabled as the examiner has done in this case. In essence, rather than carry his initial burden of establishing a prima facie case of nonenablement, the examiner has inappropriately leaped to an unsupported conclusion of nonenablement based upon his unfounded suspicions and assumptions. In this way, the examiner inappropriately has required the appellants to carry the initial burden of proving that the here claimed subject matter is enabled. As previously indicated, it is the initial burden of the examiner to advance acceptable reasoning inconsistent with enablement. In re Strahilevitz, id. Further, the analytical framework by 5Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007