Appeal No. 2003-1512 8
Application No. 09/256,709
The Rejection under Section 112, First Paragraph
We turn next to the examiner’s rejection under the first paragraph of 35 U.S.C.
Section 112, first paragraph, on the grounds of lack of enablement. When rejecting a
claim under the enablement requirement of section 112, the PTO bears the initial burden
of setting forth a reasonable explanation as to why it believes the scope of protection
provided by the claimed subject matter is not adequately enabled by the description of the
invention provided in the specification of the application. This includes providing sufficient
reasons for doubting any assertions in the specification as to the scope of enablement. If
this burden is met, the burden then shifts to the appellants to provide suitable proofs that
the specification is enabling. In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d
1510, 1513 (Fed. Cir. 1993); In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ
367, 369-70 (CCPA 1971).
The examiner’s position is that the claimed subject matter is not enabled in the
specification, because
[t]he instant specification teaches that the claimed
molecular weight is critical to the practice of appellants
invention. Specifically on page 9, Appellants’ disclose
that if the molecular weight of the methyl methacrylate
polymer (c) is less than 10,000, the adhesion to the
base layer and weatherability are reduced, and if the
molecular weight exceeds 200,000, the viscosity of
the composition for forming a coating increases, and as
a result, the spreadability decreases and it becomes
difficult to obtain a smooth film surface. Since the
molecular weight of large polymers can vary significantly,
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007