Appeal No. 2002-0767
Application No. 09/382,381
Scarborough, 500 F.2d 560, 566, 182 USPQ 298, 302-03 (CCPA 1974).
Moreover, in rejecting a claim for lack of enablement, it is also
well settled that the examiner has the initial burden of
advancing acceptable reasoning inconsistent with enablement in
order to substantiate the rejection. See In re Strahilevitz,
668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982); In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
Once this is done, the burden shifts to appellants to rebut this
conclusion by presenting evidence to prove that the disclosure in
the specification is enabling. See In re Doyle, 482 F.2d 1385,
1392, 179 USPQ 227, 232 (CCPA 1973); In re Eynde, 480 F.2d 1364,
1370, 178 USPQ 470, 474 (CCPA 1973).
In the present case, after reviewing the disclosure as set
forth in the specification and the invention as seen in the
drawings of the application from the perspective of one of
ordinary skill in the art, and having considered the examiner's
position as set forth on pages 4 and 5 of the answer, we are of
the opinion that the examiner has not met the burden of advancing
acceptable reasoning inconsistent with enablement. The
examiner's mere assertion that certain limitations of the claims
on appeal (e.g., the last clause of claim 1) are not expressly
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