Appeal No. 1999-2264
Application No. 08/549,074
brief that “almost anyone with any mechanical skill, not just the
person of ordinary skill in this art, would immediately know how
to provide the relative movement [of the cylinder 6 on the piston
rod 2],” and provide a drawing showing where holes “A” and “B”
would be located in the wall of the piston rod 2 to pass the oil
to the interior of the cylinder 6. The examiner replies at page
6 of the answer that there is no evidence to support appellants’
above-quoted statement, and that “evidence of prior art structure
should have been provided.”
The test for compliance with the enablement requirement of
§ 112, first paragraph, is whether the application adequately
discloses the claimed invention so as to enable a person skilled
in the art to practice the invention at the time the application
was filed without undue experimentation. In re Swartz, supra.
In order to reject a claim for lack of enablement, the examiner
has the initial burden of producing reasons that substantiate the
rejection. In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510,
1513 (Fed. Cir. 1993); In re Marzocchi, 439 F.2d 220, 223-24, 169
USPQ 367, 369-70 (CCPA 1971). Once that is done, the burden
shifts to the applicants to rebut this conclusion by presenting
evidence to prove that the disclosure in the specification is
enabling. In re Wright, supra; In re Eynde, 480 F.2d 1364, 1370,
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