Appeal 2007-1560
Application 10/680,968
required for activation of the liner material corresponding with the
scope of the claims on appeal, compliance with the enablement
requirement is presumed. Marzocchi, 439 F.2d at 223-24, 169
USPQ at 369-70.
It is the Examiner’s burden to present adequate basis for
doubting the objective truth of Appellants’ statements in the
Specification, i.e., to provide scientific reasoning and/or evidence as
to why one of ordinary skill in the art would not have been able to
make and use the full scope of the subject matter claimed based on
the written description of the invention in the Specification without
undue experimentation. Id. On this record, however, the Examiner
has not carried this burden. The Examiner has not proffered any
adequate scientific reasoning and/or evidence to doubt the accuracy
of Appellants’ statements in the Specification. (See Answer 3-6).
The Appellants point to specific portions of the Specification
to address the concerns raised by the Examiner (Br. 4). Appellants
specifically disclose that the combination of stretching and retracting
portions of the composite material, achieved when donning the
article, activates the composite (Br. 4).
The Examiner has failed to explain why the portions of the
Specification identified by the Appellants would not have been
suitable for a person of ordinary skill in the art to practice the full
scope of the claimed subject matter.
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: September 9, 2013