Appeal 2006-2121
Application 10/025,473
the scope of enablement.2 The Examiner appears to be concerned that Appellant
has not produced a C20 Fullerene molecule polymerized into a one dimensional
chain. The Examiner asserts that the Appellant has only provided simulated results
in the Example contained in the specification. (Answer 4-5). However, the
Examiner has not directed us to evidence or provided convincing reasoning that
establishes the subject matter of the appealed claims is in an unpredictable art
and/or that undue experimentation would be required. As such, the Examiner has
not provided a basis for questioning the presumption of an enabling disclosure.
Thus, the Examiner has inappropriately required the Appellant to carry the initial
burden of proving that the claimed subject matter is enabling.
In essence rather than carrying the initial burden of establishing a prima
facie case of enablement, the Examiner has inappropriately leaped to the
conclusion of nonenablement.3 In light of the foregoing we cannot uphold the
Examiner’s § 112, first paragraph, rejection of the appealed claims.
2It is noted that the Examiner cites an article to Margadonn on page 10 of the
Answer. This reference has not properly been cited and relied upon by the
Examiner in the statement of the rejection. The Examiner has also not provided an
explanation as to the relevance of the teachings of the cited article directed to high
pressure polymerization of Li-Intercalated Fulleride Li3CsC60 is relevant to a C20
Fulleride material.
3The Examiner’s discussion of the factual inquiries as listed in In re Wands, 858
F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), in the Office action mailed
December 26, 2001 has been noted. However, the Examiner has not provided
evidence or convincing reasoning to support the allegations stated in the Office
action.
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