Appeal No. 2001-1344
Application No. 09/218,763
entirety, would have no difficulty ascertaining the scope of the
invention recited in claim 11. Therefore, the rejection of claim
11 as being indefinite under the second paragraph of 35 U.S.C.
§ 112 is not sustained. We do, however, sustain the Examiner’s 35
U.S.C. § 112, second paragraph, rejection of claim 19 as improperly
setting forth a duplicate recitation of an optical block
“...comprised of a refractive material,” a limitation which appears
in base claim 1.1
Turning to a consideration of the Examiner’s assertion of lack
of enablement of Appellant’s disclosure, we note that, in order to
comply with the enablement provision of 35 U.S.C. § 112, first
paragraph, the disclosure must adequately describe the claimed
invention so that the artisan could practice it without undue
experimentation. In re Scarbrough, 500 F.2d 560, 566, 182 USPQ
298, 305 (CCPA 1974); In re Brandstadter, 484 F.2d 1395, 1404, 179
USPQ 286, 293 (CCPA 1973); and In re Gay, 309 F.2d 769, 774, 135
USPQ 311, 316 (CCPA 1962). If the Examiner has a reasonable basis
for questioning the sufficiency of the disclosure, the burden
shifts to Appellant to come forward with evidence to rebut this
challenge. In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232
1 Appellant (Brief, page 6) does not contest the Examiner’s 35 U.S.C.
§ 112, second paragraph, rejection of claim 19.
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