Appeal No. 2006-1597
Application No. 09/218,822
experimentation. In re Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 305 (CCPA 1974); In re
Brandstadter, 484 F.2d 1395, 1404, 179 USPQ 286, 293 (CCPA 1973); and In re Gay, 309 F.2d
769, 774, 135 USPQ 311, 316 (CCPA 1962). If the Examiner has a reasonable basis for
questioning the sufficiency of the disclosure, the burden shifts to Appellants to come forward
with evidence to rebut this challenge. In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232
(CCPA 1973), cert. denied, 416 U.S. 935 (1974); In re Brown, 477 F.2d 946, 950, 177 USPQ
691, 694 (CCPA 1973); and In re Ghiron, 442 F.2d 985, 992, 169 USPQ 723, 728 (CCPA 1971).
However, the burden is initially upon the Examiner to establish a reasonable basis for
questioning the adequacy of the disclosure. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ
561, 563 (CCPA 1982); In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976);
and In re Armbruster, 512 F.2d 676, 677, 185 USPQ 152, 153 (CCPA 1975).
The Examiner has questioned (Answer, pages 3 and 4) the sufficiency of Appellants’
disclosure in describing the implementation of a system which incorporates a game player into a
real time interaction with events from which telemetry data has been collected. After careful
review of the arguments of record, however, we are in agreement with Appellants’ position as
stated in the Briefs. As asserted by Appellants (Brief, pages 14 and 15; Reply Brief, pages 1-3),
the Examiner, aside from a general allegation of insufficiency, has never specifically indicated
how Appellants’ disclosure would not be enabling with regard to the particular features recited in
the appealed claims.
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