Appeal No. 2004-0910
Application No. 09/756,632
8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert. denied, 490 U.S. 1046
(1989); In re Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661
(CCPA 1976).
In order to make a rejection, the examiner has the initial
burden to establish a reasonable basis to question the enablement
provided for the claimed invention. See In re Wright, 999 F.2d
1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)(examiner
must provide a reasonable explanation as to why the scope of
protection provided by a claim is not adequately enabled by the
disclosure).
Once the examiner has established a reasonable basis to
question the enablement provided for the claimed invention, the
burden falls on the appellant 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).
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
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