Appeal No. 1999-2834
Application No. 08/483,731
Reference is made to the answer (paper number 24) for
further detailed positions of the examiner, and to the briefs
(paper numbers 23 and 25) for appellant’s rebuttal to the
examiner’s rejection.
OPINION
Our reviewing court stated in In re Wright, 999 F.2d 1557,
1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993):
When rejecting a claim under the enablement requirement
of section 112, the PTO bears an initial burden of setting
forth a reasonable explanation as to why it believes that
the scope of protection provided by that claim is not
adequately enabled by the description of the invention
provided in the specification of the application; this
includes, of course, providing sufficient reasons for
doubting any assertions in the specification as to the scope
of enablement. If the PTO meets this burden, the burden
then shifts to the applicant to provide suitable proofs
indicating that the specification is indeed enabling.
At the outset, we agree with the appellant (brief, pages
3 and 4) that claims 102 and 103 are directed to a disclosed
embodiment of the invention that does not use x-rays, a cold
cathode or a vacuum. For this reason, the lack of enablement
rejection is reversed ab initio as to these claims.
Inasmuch as the disclosed and claimed invention is a
replacement for the standard optical lithography integrated
circuit mask, and is made from a heretofore relatively unknown
3
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