Appeal No. 2004-0030 Page 6
Application No. 09/337,492
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 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/her burden of proof by advancing acceptable
reasoning inconsistent with enablement. This the examiner has
not done. As set forth in the specification (page 2) the
invention relates to a control apparatus in which malfunction is
prevented by locating a gap-maintaining member between a control
1
1The 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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