Appeal No. 1998-1433
Application No. 08/241,252
182 USPQ 298, 302-03 (CCPA 1974). Moreover, in rejecting a claim
for lack of enablement, it is also well settled that the examiner
has the initial burden of advancing acceptable reasoning
inconsistent with enablement in order to substantiate the
rejection. See In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ
561, 563 (CCPA 1982); In re Marzocchi, 439 F.2d 220, 223,
169 USPQ 367, 369 (CCPA 1971). Once this is done, the burden
shifts to appellants to rebut this conclusion by presenting
evidence to prove that the disclosure in the specification is
enabling. See In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227,
232 (CCPA 1973); In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470,
474 (CCPA 1973).
In the case before us, after reviewing the disclosure as set
forth in the specification and the invention as exemplified in
drawing Figures 1-10 of the application, and considering the
examiner's position in the final rejection and answer, we are of
the opinion that the examiner has not met his burden of advancing
acceptable reasoning inconsistent with enablement as to claims 1
and 3 through 11 on appeal. While it is true that the claims
before us on appeal are far broader than appellants' disclosed
preferred embodiment of a fuel injector, this alone is not
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