Appeal 2007-4234
Application 10/929,891
of ordinary skill in the art without undue experimentation." Nat'l Recovery
Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196, 49
USPQ2d 1671, 1676 (Fed. Cir. 1999). When rejecting a claim for lack of
enablement under section 112, the Examiner bears an initial burden of
setting forth a reasonable explanation why he believes that the scope of the
claims would not have been adequately enabled by the supporting
specification. This explanation includes providing sufficient reasons for
doubting assertions in the specification. If the Examiner satisfies this
burden, the burden then shifts to the applicant to provide suitable proofs
establishing that the specification is indeed enabling. In re Marzocchi, 439
F.2d 220, 223, 169 USPQ 367, 369-70 (CCPA 1971).
Claims 1-19 stand rejected under § 112, first paragraph, as not
enabled throughout their scope.
[21] The Examiner found that Appellant's specification described a
specific chemical dispersant on page 22 (Answer at 3).
[22] The Examiner concluded that "[m]erely reciting the desired result
(the properties obtained) does not enable claims which are not limited
to the specific compositions shown to achieve them" (Answer at 3).
This superficial analysis by the Examiner is insufficient to meet his
initial burden of providing a reasonable explanation as to why the disclosure
in the specification does not enable the full scope of claims 1-19.
For example, claim 1 recites a method of treating a crystalline wax in
a petrochemical mixture to reduce its surface tension, thereby converting it
to an amorphous form which is dispersed in a diluent. There are no
limitations recited in claim 1 as to where the method is performed or at what
temperature or how long the wax must minimally remain dispersed in the
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