Appeal No. 2005-0855 5
Application No. 10/269,807
question the enablement of the disclosure, the examiner has the
initial burden of advancing acceptable reasoning inconsistent
with enablement. Id.
The examiner considers the appellant’s disclosure to be non-
enabling in four respects:
. . . There is neither an adequate description nor
enabling disclosure as to what is encompassed by the
term, “activating a positron emitter”. A “positron
emitter” is inherently already activated, i.e., it is
radioactive.
At best, the use of the term “activating a
positron emitter” is superfluous.
At worst, the term would imply that a positron
emitter is either being transformed to another positron
emitter or its energy level is further raised by the
energy of the activating photon. There is no support
in the specification for either one of these two
alternatives [second answer, page 3];
There is neither an adequate description nor
enabling disclosure as to how and in what manner
potential interferences in the data are accounted for
in the analysis. For example, Claim 1 recites the step
of bombarding the specimen with photons at least as
great as the threshold photon energy required to
activate the selected positron emitter and detecting
gamma rays produced by annihilation of positrons with
elections in the specimen.
. . . [T]here is no support as to how one would
differentiate between the signals from the selected
positron emitter and from the non-selected ones [second
answer, pages 6 and 7];
There is neither an adequate description nor
enabling disclosure as to how and in what manner one
should select an algorithm from a plurality of
available algorithms, modify/manipulate the selected
algorithm and evaluate the constants in the selected
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