Appeal No. 2001-1115
Application No. 08/946,693
else. Appellants argue that there is no other reasonable
meaning for “pure crossover interconnection.” (Brief, page 9.)
The first paragraph of 35 U.S.C. § 112, with regard to
enablement, requires that the specification enable a person
having ordinary skill in the art to make and use the claimed
invention. Further, enablement requires that the specification
teach those having ordinary skill in the art to make and use the
invention without “undue experimentation.” In re Vaeck, 947
F.2d 488, 495-96, 20 USPQ2d 1483, 1444-45 (Fed. Cir. 1991).
Also, it is well settled that the examiner has the burden of
providing a reasonable explanation, supported by the record as a
whole, why the assertions as to the scope of objective
enablement set forth in the specification are in doubt,
including reasons why the description of the invention in the
specification would not have enabled one of ordinary skill in
this art to practice the claimed invention without undue
experimentation, in order to establish a prima facie case under
the enablement requirement of the first paragraph of § 112. In
re Wright, 999 F.2d 157, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993); In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-
70 (CCPA 1971). We determine that the examiner has not met
this burden for the following reasons.
Firstly, the examiner does not provide reasons why the
description of the invention in the specification would not have
enabled one of ordinary skill in this art to practice the
claimed invention without undue experimentation. For example,
the examiner’s comments made on page 2 of Paper No. 11 in
connection with this rejection do not include such reasons.
Also, the examiner’s comments made on page 4 of the Answer do
not include such reasons. Also, in the reply brief, appellants
argue that the examiner does not explain why one skilled in the
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