What is the examiner’s burden under the enablement requirement?
The examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention. As stated in MPEP 2164.04:
“In order to make a rejection, the examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention.” (In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993))
The examiner must provide a reasonable explanation as to why the scope of protection provided by a claim is not adequately enabled by the disclosure. If there’s reason to doubt the objective truth of the statements in the specification, the examiner must explain why and provide evidence or reasoning to support this doubt.
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Topics:
MPEP 2100 - Patentability,
MPEP 2164.04 - Burden On The Examiner Under The Enablement Requirement,
Patent Law,
Patent Procedure