Appeal No. 2004-1332
Application No. 10/010,691
teaching of programing a controller or central processing unit for
a priority of operation based on a statistical analysis (see lines
49-57 in column 16). In this way, the controller programming
desired by Houlihan would have been effected via a parameter,
namely, statistical analysis which Barrett evinces was known in the
prior art as suitable for this purpose.
In support of his position that the Examiner’s rejection is
improper, the Appellant argues that “Barrett ... is a non enabling
disclosure” (brief, page 4). More specifically, it is the
Appellant’s position that “[t]he single line statement in Barrett
that ‘[t]he specific priority may be established by the user or
based on a statistical analysis’ is a mere ‘germ’ of an idea”
(brief, page 4) which would not enable an artisan to practice
Barrett’s aforequoted objective.
We are unpersuaded by the Appellant’s argument for a number of
reasons.
First, because the Barrett reference is a US patent, it is
presumptively valid and thus enabled. 35 U.S.C. § 282. Further,
it is well settled that the burden of proving the inoperability
(i.e., nonenablement) of a U.S. patent is not insubstantial. In re
Weber, 450 F.2d 1403, 1407, 160 USPQ 549, 553 (CCPA 1969); In re
Michalek, 162 F.2d 229, 231-32, 74 USPQ 107, 109 (CCPA 1947). On
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