Appeal No. 2004-0323 Page 6
Application No. 09/716,045
In order to make a nonenablement rejection, the examiner has the initial burden
to establish a reasonable basis why one skilled in the art could not make and use the
claimed invention from the disclosure coupled with information known in the art without
undue experimentation. See In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510,
1513 (Fed. Cir. 1993). Once the examiner has established a reasonable basis to
question that one skilled in the art could not make and use the claimed invention from
the disclosure coupled with information known in the art without undue experimentation,
the burden falls on the appellants to present persuasive arguments, supported by
suitable proofs where necessary, that one skilled in the art would be able to make and
use the claimed invention without undue experimentation using the disclosure as a
guide. See In re Brandstadter, 484 F.2d 1395, 1406, 179 USPQ 286, 294 (CCPA
1973).
Thus, the dispositive issue is whether the appellants' disclosure, considering the
level of ordinary skill in the art as of the date of the appellants' application, would have
enabled a person of such skill to make and use the appellants' 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. In fact, the
examiner has not made any showing as to why one skilled in the art could not make
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007