Appeal No. 2005-2731 4
Application No. 10/656,040
We turn first to the examiner's rejection of claim 45 under
35 U.S.C. § 112, first paragraph, as being based on a non-enabling disclosure. It is by
now well-established law that the test for compliance with the enablement requirement in
the first paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is sufficiently
complete to enable one of ordinary skill in the art to make and use the claimed invention
without undue experimentation. See, In re Moore, 439 F.2d 1232; 169 USPQ 236 (CCPA
1971). Note also, In re Scarborough, 500 F.2d 560, 182 USPQ 298 (CCPA 1974) and In
re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Moreover, in
rejecting a claim for lack of enablement, it is also well settled that the examiner has the
initial burden of advancing acceptable reasoning inconsistent with enablement in order to
substantiate the rejection. See In re Strahilevitz, 668 F.2d 1229, 212 USPQ 561 (CCPA
1982); In re Marzocchi, 439 F.2d 220, 169 USPQ 367 (CCPA 1971). Once this is done,
the burden shifts to appellant to rebut this conclusion by presenting evidence to prove that
the disclosure in the specification is enabling. See In re Doyle, 482 F.2d 1385, 179 USPQ
227 (CCPA 1973); In re Eynde, 480 F.2d 1364, 178 USPQ 640 (CCPA 1973).
In the case before us, after reviewing appellant’s arguments in the brief and reply brief,
the disclosure as set for in the specification and appellant’s claim 45, we are of the opinion
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