Appeal 2007-1893
Application 10/946,753
The Examiner notes that Shin’s topological structures control
orientation. In this regard, the Examiner indicates that nanotubes in Shin
only grow from exposed catalyst structures. As such, these nanotubes will
grow in specific patterns depending on the specific orientation and
placement of the catalysts and the topological structures. The Examiner
adds that Shin only grows horizontal nanotubes and therefore prevents
vertical growth (Answer 14). The Examiner further indicates that
topological structure also controls the length of the nanotubes since they can
only be as long as the aperture’s opening. Id.
We will sustain the Examiner’s rejection of representative claim 1. At
the outset, we address Appellants’ contention regarding the alleged lack of
enablement of the Shin reference.
We recognize that a claimed invention cannot be anticipated by a
prior art reference if the allegedly anticipatory reference is not enabled.
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354, 65
USPQ2d 1385, 1416 (Fed. Cir. 2003). But we presume that the relevant
disclosures of a prior art reference are enabled. Id. at 1355, 65 USPQ2d at
1416.5 Accordingly, the burden then shifts to Appellants to prove otherwise
by a preponderance of the evidence. Id.
On this record, Appellants have hardly met their burden of rebutting
the presumption of enablement of the Shin reference. It is well settled that
determining the level of experimentation that would be “undue” so as to
render a disclosure non-enabling is made from the viewpoint of artisans
experienced in the field of invention. Elan Pharmaceuticals, Inc. v. Mayo
Found. for Med. Educ. & Res., 346 F.3d 1051, 1055 (Fed. Cir. 2003). In
5 See also MPEP § 2121.
5
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