Appeal No. 2004-0131
Application No. 08/462,531
967, 969, 169 USPQ 795, 796 (CCPA 1971).
In view of the above, we determine that there is written
description support for claims 2-4, 6-9, 15-22, and 24-32 under
35 U.S.C. § 112, first paragraph, and therefore, we reverse the
objection to the specification and rejection of these claims
under 35 U.S.C. § 112, first paragraph (written description).
II. The 35 U.S.C. § 112, First Paragraph, Rejection (enablement)
The first paragraph of 35 U.S.C. § 112, with regard to
enablement, requires that the specification enable a person
having ordinary skill in the art to make and use the claimed
invention. Further, enablement requires that the specification
teaches those having ordinary skill in the art to make and use
the invention without “undue experimentation.” In re Vaeck, 947
F.2d 488, 495-96, 20 USPQ2d 1483, 1444-45 (Fed. Cir. 1991).
Also, it is well settled that the examiner has the burden of
providing a reasonable explanation, supported by the record as a
whole, why the assertions as to the scope of objective enablement
set forth in the specification are in doubt, including reasons
why the description of the invention in the specification would
not have enabled one of ordinary skill in this art to practice
the claimed invention without undue experimentation, in order to
establish a prima facie case under the enablement requirement of
the first paragraph of § 112. In re Wright, 999 F.2d 157, 1561,
27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Marzocchi, 439 F.2d
220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971). We determine
that the examiner has not met this burden for the following
reasons.
As mentioned in Section I, supra, in the instant case, the
examiner objects to the specification and rejects the claims 2-4,
6-9, 15-22 and 24-32, stating that “[t]he combination of a shoe
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