Appeal No. 2003-0208 Page 6
Application No. 08/578,996
appellants (brief, pp. 4-5) that one skilled in this art would understand what an
intercrystal grain boundary is and how to produce it in a ceramic. Lastly, whether or not
this structure would be inherent is of no moment in determining if the original disclosure
shows that the appellants had possession of the presently claimed invention at the time
the application was filed.
With regard to the possibility that this rejection is based upon the enablement
requirement5 and not the written description requirement, we note only that the
examiner has not met the initial burden of establishing a reasonable basis to question
the enablement provided for the claimed invention. See In re Wright, 999 F.2d 1557,
1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner must provide a
reasonable explanation as to why the scope of protection provided by a claim is not
adequately enabled by the disclosure). A disclosure which contains a teaching of the
manner and process of making and using an 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 being in compliance with the enablement requirement of 35 U.S.C.
§ 112, first paragraph, unless there is a reason to doubt the objective truth of the
statements contained therein which must be relied on for enabling support. Assuming
5 The test for enablement is whether one skilled in the art could make and use the claimed
invention from the disclosure coupled with information known in the art without undue experimentation.
See United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert.
denied, 109 S.Ct. 1954 (1989); In re Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
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