Appeal No. 2000-0042
Application No. 08/948,179
one of ordinary skill in the art would be unable to practice the
claimed invention without undue experimentation. In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982);
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA
1971); In re Armbruster, 512 F.2d 676, 677, 185 USPQ 152, 153
(CCPA 1975). In the present case, the examiner has done little
more than question whether one of ordinary skill in the art would
be able to practice the claimed method of facet etching with a
heavy halogen gas without undue experimentation. Such a general
query does not satisfy the examiner's burden of, in the first
instance, setting forth reasoning or objective evidence which
demonstrates that the skilled artisan would, in fact, experience
considerable difficulty in practicing the claimed method. The
lack of details in the present specification concerning the
operating parameters of the method does not alleviate the
examiner of providing a factual basis for a prima facie case of
non-enablement.
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