Appeal 2007-1344
Application 10/045,789
response to the identified operator and his or her desires and
requirements. (Gormley, col. 4, ll. 37-48).
8. Becker discloses an alternator regulator, but does not teach the missing
limitation (Becker passim).
9. None of the cited references disclose the limitation of selection of control
parameters by algorithmic processing of values of a plurality of bit
positions of the version coding.
DISCUSSION
ENABLEMENT
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
7
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