Appeal No. 2000-1082 5
Application No. 08/727,303
conclusions.
We turn first to the examiner’s rejection under the first paragraph of 35 U.S.C.
§ 112, first paragraph, on the grounds of lack of enablement. When rejecting a claim
under the enablement requirement of section 112, the PTO bears the initial burden of
setting forth a reasonable explanation as to why it believes the scope of protection provided
by the claimed subject matter is not adequately enabled by the description of the invention
provided in the specification of the application. This includes providing sufficient reasons
for doubting any assertions in the specification as to the scope of enablement. If this
burden is met, the burden then shifts to the appellants to provide suitable proofs that the
specification is enabling. 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).
The examiner’s position is that the claimed subject matter is not enabled in the
specification, because the original specification fails to suggest the specific temperature and
pressure relationship to arrive at the invention of the claimed subject matter. See Answer,
page 8. However, as the examiner readily admits the specific temperature and pressure
conditions required by the claimed subject matter are known, taught and disclosed in the
prior art. See Answer, page 5 referring to Dobson ‘344 and column 3, lines 11-15 of
said reference. One of ordinary skill in the art would unequivocally understand from a
reading of the specification that the temperature and pressure conditions utilized were well
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