Appeal No. 2004-1829
Application No. 09/887,273
We reverse.
The examiner’s position is that “the specification, while
being enabling for nickel and palladium complexes comprising a
diimine ligand, does not reasonably provide enablement for
methods including any catalyst formulation within the scope of
‘transition metal containing coordination polymerization
catalyst.’” (Answer at 3.) According to the examiner, “the
[appealed] claims include the use of any transition metal
coordination catalyst, yet the specification includes no
teaching that the claimed process could be performed with any
catalyst other than one comprising nickel or palladium and a
diimine coordinating ligand.” (Id.) We cannot agree.
Like any other rejection, the initial burden of
establishing a prima facie case of unpatentability based on non-
enablement under the first paragraph of 35 U.S.C. § 112 rests on
the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). The predecessor of our reviewing
court has stated as follows:
[A] specification disclosure which contains a teaching
of the manner and process of making and using the
invention in terms which correspond in scope to those
used in describing and defining the subject matter
sought to be patented must be taken as in compliance
with the enabling requirement of the first paragraph
of Section 112 unless there is reason to doubt the
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