Appeal No. 1999-1847
Application No. 08/810,581
specific interconnection of the functional units “must” be disclosed in the specification.
(See answer at page 8.) We disagree with the examiner. The examiner provides no
reasoned analysis of why these would be needed or required. The examiner then hedges
by stating that if the interconnections are not disclosed then “it is likely that undue
experimentation, or more than routine experimentation would be required.” (See answer at
page 9.) This likelihood is not the test for a lack of enablement. The examiner carries the
initial burden to establish a case. Here, the examiner has not met his burden, and we will
not sustain the rejection of claims 7-12 under 35 U.S.C. § 112, first paragraph.
However, appellant has not argued that the examiner failed to establish a prima facie
case, but merely that the specification is enabling to those skilled in the art. (See brief at
pages 3-4.) Furthermore, appellant relies on a basic example of the operation of the
invention at pages 5 and 6 of the brief. Appellant cites to only specific portions of pages 5,
6, and 7 of the specification to support the example. Appellant argues that the devices in
the specification and claims are standard components which are connected by standard
electrical connections and that one skilled in the art would be able to make and use the
invention without undue experimentation. (See brief at page 7.) We agree with appellant.
Specifically, the prior art to Wuhrl applied against the claims is indicative of the level of skill
in the relevant art. Wuhrl contains a similar level of description as the instant description
with respect to the interconnection of standard elements and does not provide any of the
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