Appeal No. 2004-2355
Application No. 09/935,721 Page 5
inconsistent with the contested statement. Otherwise,
there would be no need for the applicant to go to the
trouble and expense of supporting his presumptively
accurate disclosure.
In our view, the examiner has not carried the initial burden
of setting forth evidence or sound technical reasoning which
indicates that one of ordinary skill in the art would not have
been enabled by appellant’s specification to form a magnetic
dispersion medium including a bulk material, a first colorant, a
second colorant, a thickener and a magnetic material as specified
in original claim 1 wherein the colorants are as specified in
original claims 7 and 9 (see, e.g., appealed claim 1). Nor has
the examiner fairly established that one of ordinary skill in the
art would not have been enabled by appellant’s specification to
form a magnetic dispersion medium including a bulk material, a
first colorant comprising a benzo oxazole fluorescent whitener, a
thickener and a magnetic material as set forth in original claim
10 as now required by appealed claim 10.1
Whether making and using the invention would have required
undue experimentation, and thus whether the disclosure is
enabling, is a legal conclusion based upon several underlying
1
1 It is well-settled that the original claims are part of
the original application disclosure.
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