Appeal No. 2004-0576 Page 5
Application No. 10/087,374
Once the examiner has established a reasonable basis to question the
enablement provided for the claimed invention, 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 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 enablement3 against evidence that the specification is not enabling.
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 the rejection before us in this appeal, the examiner states (answer, p. 4) that
3 The appellants may attempt to overcome the examiner's doubt about enablement by pointing to
details in the disclosure but may not add new matter. The appellants 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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