Appeal No. 2001-2692 Page 4
Application No. 08/789,001
Nonenablement Rejection of Claims 1-38
Rather than reiterate the positions of the examiner or the appellants in toto, we
address the main point of contention therebetween. The examiner alleges, "[t]here is
no support for the 'automatically selecting and interconnecting' feature (see preamble,
claim 1, for example). This applies to all independent claims. . . ." (Examiner's Answer
at 4.) The appellants argue, "such a 'feature' is not found in claim 1," (Appeal Br2.
at 19); "it merely recites the purpose of a process or the intended use of a structure."
(Id.)
"[T]he 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. . . ." In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70
(CCPA 1971)). More specifically, "[t]o be enabling under §112, a patent must contain a
description that enables one skilled in the art to make and use the claimed invention."
Atlas Powder Co. v. E. I. Du Pont de Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ
409, 413 (Fed. Cir. 1984) (citing Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220
2We rely on and refer to the supplemental appeal brief, (Paper No. 11), in lieu of
the original appeal brief, (Paper No. 8), because the latter was defective. (Paper
No. 9.) The original appeal brief was not considered in deciding this appeal.
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