Appeal 2007-0650
Application 10/808,264
(Br. 3). Appellants also contend that the Ullman ether synthesis
referred to by Keller, in declarant Keller’s expert opinion, cannot be
used to make oligomeric or polymeric aryl ethers in high yield and
high molecular weight (Br. 3 referring to the Keller Declaration).
Based on the contentions advanced in the Briefs and Answer
the issue is: Have Appellants presented sufficient evidence to show
that one of ordinary skill in the art would not be able to synthesize the
polyaromatic ethers with values of x of 7, 8, 9, or 10 taught by Keller
at the time of the invention?
We select claim 1 as representative in deciding the above issue.
It is well settled that prior art under 35 U.S.C. § 102(b) must be
“enabling”, i.e., it “must sufficiently describe the claimed invention to
have placed the public in possession of it.” In re Donohue, 766 F.2d
531, 533, 226 USPQ 619, 621 (Fed. Cir. 1985). “Such possession is
effected if one of ordinary skill in the art could have combined the
publication's description of the invention with his own knowledge to
make the claimed invention.” Id. A reference is presumed to be
enabling and therefore, once the examiner establishes that the
reference teaches each and every limitation of the claimed invention,
the burden shifts to the applicants to prove the reference is not
enabling. Chester v. Miller, 906 F.2d 1574, 1578, 15 USPQ2d 1333,
1337 (Fed. Cir. 1990); In re Sasse, 629 F.2d 675, 681, 207 USPQ 107,
111 (CCPA 1980).
As acknowledged by Appellants, Keller describes resins and
oligomers containing polyaromatic ethers within the scope of claim 1
(Br. 3-4). The burden, therefore, is on Appellants to show non-
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