Appeal 2007-2046
Application 10/328,497
[o]bjections are not reviewable on appeal” (Answer, para. (6)).1 In the
Examiner’s final rejection it is stated that “[t]he specification is objected to
as not containing ‘a written description of the invention . . . in such full,
clear, concise, and exact terms as to enable any person skilled in the art . . .
to make and use the same’” (Final Rejection 2, penultimate para.).
The Examiner errs in objecting to the claims on the basis that the
Specification is non-enabling to one of ordinary skill in the art. While a
non-enabling specification is objected to, the claims correlating to the non-
enabling aspect of the Specification are rejected under 35 U.S.C . § 112, first
paragraph (see MPEP § 706.03(c)). As a result, Appellants are afforded the
opportunity to rebut the rejection of the claims under § 112, first paragraph.
Accordingly, this Application is remanded to the Examiner for
consideration of rejecting claims that were improperly objected to. The
Examiner should bear in mind that he/she has the initial burden of
establishing, by compelling reasoning or objective evidence, that one of
ordinary skill in the art would be unable to practice the claimed invention
without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232,
212 USPQ 561, 563 (CCPA 1982); In re Marzocchi, 439 F.2d 220, 223,
169 USPQ 367, 369 (CCPA 1971); In re Armbruster, 512 F.2d 676, 677,
185 USPQ 152, 153 (CCPA 1975). The Examiner should also be aware that
it is not the function of the claims to specifically exclude every possible
1 It can be seen that the Examiner makes inconsistent statements with
respect to the status of claims 21 and 23.
2
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Last modified: September 9, 2013