Appeal No. 2005-1431
Application 09/442,070
A specification is enabling if it teaches those skilled in the art how to make and use the
full scope of the claimed invention without "undue experimentation." In re Wright, 999 F.2d
1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). The initial burden on the issue of
enablement rests on the examiner:
When rejecting a claim under the enablement requirement of section 112,
the PTO bears an initial burden of setting forth a reasonable explanation as to why
it believes that the scope of protection provided by that claim is not adequately
enabled by the description of the invention provided in the specification of the
application . . . . If the PTO meets this burden, the burden then shifts to the
applicant to provide suitable proofs indicating that the specification is indeed
enabling. [In re] Marzocchi, 439 F.2d [220,] 223-24, 169 USPQ [367,] 369-70
[(CCPA 1971)].
Wright, 999 F.2d at 1561-62, 27 USPQ2d at 1513. The examiner explained the rationale for the
rejection as follows:
The applicants did not even disclose or suggest, explicitly or implicitly, any
teaching related to [a] network environment, or distributed hypermedia,
hyperlink, network server, or network browser for parsing of format text in a
distributed hypermedia document. Thus even if one of skill in the art is fully
aware of [nearly illegible, networking?] aspect and functionality of OLE as
argued by the applicants, [the] lack[] of any teaching or suggestion related to
network environment does not warrant the appellants' allegation of possession of
the invention as claimed, and it would not enable one of ordinary skill in the art to
make and use the applicants' teaching of in-place interaction with containee
objects in network environment as recited in claims 40-50 without an undue
experimentation.
Answer at 19. This statement of the basis for the rejection fails to satisfy the examiner's initial
burden of proof because it merely repeats the basis for the written description rejection. It does
not necessarily follow from the fact that appellants' patent fails to disclose a computer network, a
network server, a network browser application, or distributed hypermedia document (all features
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