Appeal No. 1999-0752
Application No. 08/806,103
To satisfy § 112, the specification disclosure must be
sufficiently complete to enable one of ordinary skill
in the art to make [and/or use] the invention without
undue experimentation, although the need for a minimum
amount of experimentation is not fatal . . . .
Enablement is the criterion, and every detail need not
be set forth in the written specification if the skill
in the art is such that the disclosure enables one to
make [and/or use] the invention. [Citations omitted.]
The determination of what constitutes undue experimentation in a
given case requires the application of a standard of reasonable-
ness, having due regard for the nature of the invention and the
state of the art. See Ex parte Forman, 230 USPQ 546, 547 (Bd.
Pat. App. & Int. 1986). The examiner has the initial burden of
producing evidence or reasons that substantiate a rejection based
on lack of enablement using the above-mentioned standard. See In
re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971);
In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA
1982). Once this is done, the burden shifts to the appellants to
rebut this conclusion by presenting evidence to prove that the
disclosure is enabling. See In re Eynde, 480 F.2d 1364, 1370,
178 USPQ 470, 474 (CCPA 1973); In re Doyle, 482 F.2d 1385, 1392,
179 USPQ 227, 232 (CCPA 1973), cert. denied, 416 U.S. 935 (1974).
Here, we observe that the examiner has not satisfied her
initial burden of producing evidence and/or scientific reasoning
which would substantiate a rejection based on lack of enablement.
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