Appeal No. 2003-1268 Page 6
Application No. 09/706,566
disclosure and all evidence in the record, weighing evidence that supports enablement1
against evidence that the specification is not enabling.
Thus, the dispositive issue is whether the appellant's disclosure, considering the
level of ordinary skill in the art as of the date of the appellant's application, would have
enabled a person of such skill to make and use the appellant's invention without undue
experimentation. The threshold step in resolving this issue as set forth supra is to
determine whether the examiner has met his burden of proof by advancing acceptable
reasoning inconsistent with enablement. This the examiner has not done.
The sole basis for this rejection as set forth in the final rejection (p. 2) and the
answer (p. 3) was as follows:
The device, as originally disclosed, appears to be inoperative as the
sleeve 31 cannot be assembled on the bushing 11. From the description and
drawings, the bushing 11 is a one-piece element with the flanges 111 and 112.
Thus as the flanges are larger than the opening in the sleeve 31, the sleeve
cannot be assembled on the bushing.
The above-noted basis for this rejection fails to meet the examiner's initial
burden to establish a reasonable basis to question the enablement provided for the
1 The appellant may attempt to overcome the examiner's doubt about enablement by pointing to
details in the disclosure but may not add new matter. The appellant may also submit factual affidavits
under 37 CFR § 1.132 or cite references to show what one skilled in the art would have known at the time
of filing the application.
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Last modified: November 3, 2007