Appeal No. 2000-1569
Application 08/964,686
based on the fact that the scope of the claimed invention
includes embodiments (disks having a surface roughness near zero
Angstroms) which the artisan cannot make based on appellants’
specification [answer, pages 7-8].
We agree with the position argued by the examiner. As we
noted above, the enablement question is primarily concerned with
the scope of the appealed claims including embodiments which have
not been adequately disclosed. The examiner bears the initial
burden of setting forth a reasonable explanation as to why the
scope of protection provided by the claims is thought to be not
adequately enabled by the description of the invention provided
in the specification. If that burden is met by the examiner, the
burden then shifts to the applicant to provide proof that the
specification is indeed enabling. In re Wright, 999 F.2d 1557,
1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). Thus, the
question before us is whether claim 1 includes within its scope
subject matter which has not been adequately disclosed.
Appellants note in the background portion of the
specification that the main problem facing manufacturers of
magnetic disk drives is the need to make the disks as smooth as
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