Appeal No. 2000-1308
Application 08/550,909
the art would be unable to make and use the invention based on
the disclosure. Appellants specifically address each of these
general observations by the examiner [brief, pages 30-38].
We have carefully reviewed the rejected claims, the
supporting disclosure, and the arguments of appellants and the
examiner. In light of this review, we agree with appellants that
the disclosure satisfies all requirements of the first paragraph
of 35 U.S.C. § 112. More importantly, we find that the examiner
has failed to provide convincing reasons in support of the
rejection. The examiner has the initial burden of providing
evidence which establishes a prima facie case of unpatentability.
We do not find the general assertions of lack of enablement and
written description support made by the examiner in the rejection
to satisfy the burden of presenting a prima facie case of
unpatentability. We also find appellants’ responses to the
rejection to be persuasive in any case. Therefore, we do not
sustain this rejection of the examiner.
We now consider the rejection of claims 18-22 and 22-25
under 35 U.S.C. § 112, second paragraph, as being indefinite.
These rejections are set forth on pages 8-9 of the answer.
Appellants have carefully responded to each of the claim
rejections made by the examiner [brief, pages 39-40; reply brief,
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