Appeal No. 2006-0809 Page 3
Application No. 10/887,631
of the rejection and to the appellants’ replacement brief (filed July 5, 2005) and
reply brief (filed October 5, 2005) for the appellants’ arguments.
OPINION
In reaching our decision in this appeal, we have carefully considered the
appellants’ specification, claims 25-31, and the respective positions articulated by
the appellants and the examiner. As a consequence of our review, we make the
determinations that follow. It is our view that, after consideration of the record
before us, the examiner has failed to meet the initial burden of setting forth a
reasonable explanation as to why he believes that the scope of protection provided
by the claims is not adequately enabled by the description of the invention
provided in the specification of the application.
The PTO bears the initial burden when rejecting claims for lack of
enablement.
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; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as
to the scope of enablement. If the PTO meets this
burden, the burden then shifts to the applicant to provide
suitable proofs indicating that the specification is indeed
enabling.
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