Appeal No. 1999-2225
Application No. 08/815,441
establishing a prima facie case of non-enablement under the first
paragraph of 35 U.S.C. § 112 rests on the examiner. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). The predecessor of our reviewing court has stated as
follows:
[A] specification disclosure which contains a teaching
of the manner and process of making and using the
invention in terms which correspond in scope to those
used in describing and defining the subject matter
sought to be patented must be taken as in compliance
with the enabling requirement of the first paragraph of
Section 112 unless there is reason to doubt the
objective truth of the statements contained therein
which must be relied on for enabling support.
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA
1971). Thus, it is only upon the advancement of acceptable
reasoning on the part of the examiner that the burden of proving
enablement shifts to the appellants. In re Strahilevitz, 668
F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982). Here, the
examiner has not met the threshold initial burden of proof.
"Although not explicitly stated in section 112, to be
enabling, the specification of a patent must teach those skilled
in the art how to make and use the full scope of the claimed
invention without 'undue experimentation.'" 1 In re Wright, 999
1 The question of whether making and using the invention
would have required "undue experimentation" depends on several
underlying factual inquiries including: (1) the quantity of
experimentation necessary; (2) the amount of direction or guidance
presented; (3) the presence or absence of working examples; (4)
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007