Appeal No. 1998-2436
Application 08/550,667
page 17). Appellants point out, at the top of page 18 of
the brief, that the original application does expressly
mention the steps of drawing and texturizing the extruded
filaments.
As the court in In re Gaubert, 524 F.2d 1222, 1226,
187 USPQ 664, 667 (CCPA 1975)(quoting from Martin v.
Johnson, 454 F.2d 746, 751, 172 USPQ 391, 395 (CCPA
1972)) stated:
To satisfy § 112, the specification disclosure must
be sufficiently complete to enable one of ordinary skill
in the art to make the invention without undue
experimentation, although the need for a minimum amount
of experimentation is not fatal. * * * [citations
omitted.]
In the instant case, we determine that the examiner
has not satisfied his initial burden of producing any
reasonable line of reasoning which would substantiate a
rejection based on a lack of enablement. See In re
Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA
1971)(the examiner has initial burden of producing
reasons which substantiate a rejection based on a lack of
enablement).
Specifically, the examiner’s analysis fails to take
into account the state of the art discussed by appellants
on pages 16-18 of their brief. Moreover, the examiner
has not explained why undue experimentation is needed to
arrive at the claimed subject matter, especially when one
of ordinary skill in the art possesses the state of the
art knowledge of polymer extrusion as pointed out on page
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007