Appeal No. 2003-1268 Page 5
Application No. 09/706,566
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).
In order to make a nonenablement rejection, the examiner has the initial burden
to establish 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). Once the
examiner has established a reasonable basis to question the enablement provided for
the claimed invention, the burden falls on the appellant to present persuasive
arguments, supported by suitable proofs where necessary, that one skilled in the art
would be able to make and use the claimed invention using the disclosure as a guide.
See In re Brandstadter, 484 F.2d 1395, 1406, 179 USPQ 286, 294 (CCPA 1973). In
making the determination of enablement, the examiner shall consider the original
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