Appeal No. 2001-0672
Application No. 08/856,466
To comply with the enablement clause of the first paragraph of 35 U.S.C. § 112,
the disclosure must adequately describe the claimed invention so that the artisan could
practice it without undue experimentation. In re Scarbrough, 500 F.2d 560, 182 USPQ
298 (CCPA 1974); In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973);
In re Gay, 309 F.2d 769, 135 USPQ 311 (CCPA 1962). If the examiner had a
reasonable basis for questioning the sufficiency of the disclosure, the burden shifted to
the appellants to come forward with evidence to rebut this challenge. In re Doyle, 482
F.2d 1385, 179 USPQ 227 (CCPA 1973); In re Brown, 477 F.2d 946, 177 USPQ 691
(CCPA 1973); In re Ghiron, 442 F.2d 985, 169 USPQ 723 (CCPA 1971). However, the
burden was initially upon the examiner to establish a reasonable basis for questioning
the adequacy of the disclosure. In re Strahilevitz, supra; In re Angstadt, 537 F.2d 498,
190 USPQ 214 (CCPA 1976); In re Armbruster, 512 F.2d 676, 185 USPQ 152 (CCPA
1975).
In the instant case, we find that the examiner did not have a reasonable basis for
challenging the sufficiency of the instant disclosure and, to whatever extent the
challenge was reasonable, appellants have come forward with evidence rebutting such
challenge. The structure of cams 30 and 32 is not being claimed as novel or
performing some hitherto unknown task. Skilled artisans in the bottle inspection art
would clearly have known, from the instant disclosure, including the single figure, what
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