Appeal No. 2001-2292
Application No. 09/072,172
would have enabled a person of such skill to make and use the
appellant's invention without undue experimentation. In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563-64 (CCPA
1982). In calling into question the enablement of the
appellant's disclosure, the examiner has the initial burden of
advancing acceptable reasoning inconsistent with enablement. Id.
The examiner considers the appellants’ disclosure to be non-
enabling with respect to the subject matter set forth in the
appealed claims because it
fails to provide an adequate written description of the
invention so that one of skill in the art could make
the invention so that it would provide the claimed test
characteristic values as is claimed in claim 9. What
specific materials in what kind of structural
configuration will provide these test values for each
layer? This is not clear. The specification also
fails to adequately describe the actual test procedure
for the claimed test characteristic values;
consequently, one of skill in the art would not be able
to perform the tests. How is the stain length ratio
calculated? How much fluid is used and under what
conditions do these tests occur? The tests procedures
themselves are not enabled [examiner’s answer, page 3].
A review of the appellants’ disclosure, however, shows that
the examiner’s concerns are unfounded. More particularly, and
with respect to the subject matter recited in claim 9, the
appellants’ specification expressly describes with a fair degree
of detail (1) the manner in which the densities of the layers are
calculated on page 11, (2) the manner in which the pore sizes of
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