Appeal No. 2005-0821
Application No. 09/960,356
be described in the specification. See In re Buchner, 929 F.2d
660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991). Thus the
examiner should have determined whether the “fundamental”
circuits for the analysis circuit portion 1B disclosed by
appellant (specification, page 3, ll. 21-28) were well known in
this art, or could have been practiced by one of ordinary skill
in this art with only routine experimentation. In the absence of
any underlying factual inquiries, we cannot sustain a rejection
for lack of enabling disclosure.
For the foregoing reasons and those stated in the Brief and
Reply Brief, we determine that the examiner has not met the
initial burden of proof in establishing failure to meet the “how
to make and use” (enablement) requirement of section 112, first
paragraph. Therefore we reverse the examiner’s rejection of
claims 3 and 5 under 35 U.S.C. § 112, first paragraph.
C. Summary
The rejection of claims 3 and 5 for failing to fulfill the
requirements of the first paragraph of 35 U.S.C. § 112 is
reversed. The rejection of claims 3 and 5 for failing to meet
the requirements of the second paragraph of 35 U.S.C. § 112 is
also reversed.
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