Appeal No. 2004-0422
Application No. 09/046,315
With respect to independent claim 5, the Examiner bears the
initial burden of establishing a prima facie case that the
claimed subject matter is not enabled. Our review of the
rejection at page 3 of the brief and at page 4 of the final
rejection (paper number 27) finds no attempt by the Examiner to
establish a prima facie case. The Examiner has identified the
claimed subject matter for which the specification is not
enabling. However, the Examiner has failed to include any
explanation in their rejection as to why the specification is not
enabling. Office policy requires that the Examiner apply the
factors set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP
§ 2164.01(a) and § 2164.04. The explanation should include any
questions the Examiner may have asked which were not
satisfactorily resolved and consequently raise doubt as to
enablement.
Therefore, Appellants' argument at page 3 of the brief is
persuasive on its face and we will not sustain the Examiner's
rejection under 35 U.S.C. § 112.
We also note that the Examiner's lack of explanation left
both Appellants and this Board a little confused as to whether
the Examiner intended to give an enablement rejection or a
written description rejection. However, we have reviewed
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