Appeal 2007-0001
Application 09/944,589
The second issue is whether the Appellant has shown that the
Examiner erred by holding that there was a reason to combine the teachings
of the prior art, and that, when combined, the prior art rendered the claimed
subject matter obvious.
PRINCIPLES OF LAW
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. In re Wright, 999 F.2d 1557, 1561-62, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993)(citing In re Marzocchi, 439 F.2d 220,
223-24, 169 USPQ 367, 369-70 (CCPA 1971)).
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. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404
(Fed. Cir. 1988). "Enablement is not precluded by the necessity for some
experimentation. . . . However, experimentation needed to practice the
invention must not be undue experimentation. The key word is 'undue,' not
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