Appeal No. 2004-2355
Application No. 09/935,721 Page 3
OPINION
Having considered the entire record of this application,
including the arguments advanced by both the examiner and
appellant in support of their respective positions, we agree with
appellant that the examiner has not met the burden to show that
the claimed subject matter is not enabled by, or described and
supported by the original disclosure of the application.
Accordingly, we will not sustain the examiner's rejections. Our
reasoning follows.
The Rejections for Lack of Enablement
According to the examiner with respect to both of the stated
enablement rejections, the specification is non-enabling since
the “limited disclosure does not support the breadth of the
instant claims” (answer, pages 3 and 4). The examiner appears to
be concerned that appellant’s detailed disclosure of a magnetic
dispersion medium composition with specified percentages of a
particular bulk material, particular colorant(s), a particular
thickener and a particular magnetic material “does not enable any
person skilled in the art to which it pertains, or with which it
is most nearly connected, to make an invention commensurate in
scope with these [rejected] claims” (answer, pages 3 and 4).
Furthermore, the examiner urges that “the specification is not
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