Appeal No. 2005-0821
Application No. 09/960,356
B. The Rejection under § 112, ¶1
As previously discussed, the initial burden of proof rests
with the examiner to establish a lack of enabling disclosure (or
that undue experimentation is required to practice the claimed
invention). See In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d
1510, 1513 (Fed. Cir. 1993).
The examiner merely states that the disclosure at page 3,
ll. 21-28, and page 6, ll. 2-17, does not enable any person
skilled in the art to make the “single channel height analyzer
circuit” (Answer, page 3). As correctly argued by appellant
(Brief, pages 5-6; Reply Brief, page 3), the examiner has not met
the initial burden of proof. Although the Wands factors1 are not
mandatory but merely illustrative, the lack of enablement depends
on an analysis of several factual inquiries. See Amgen Inc. v.
Chugai Pharmaceutical Co., 927 F.2d 1200, 1213, 18 USPQ2d 1016,
1027 (Fed. Cir. 1991). Here the examiner has not made any
underlying factual inquiries, other than to conclude that the
breadth and nature of the invention is “unclear” (Answer, page
4). The examiner should have determined, inter alia, what was
well known in the art, since well known subject matter need not
1In re Wands, 858 F.2d 731, 735-37, 8 USPQ2d 1400, 1402-04
(Fed. Cir. 1988).
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