Appeal No. 95-1183
Application No. 07/991,693
established that broad language is not offensive to the first
paragraph of § 112 unless there is reason to doubt the presumed
objective truth of statements contained in the specification
disclosure which must be relied on for enabling support. In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
Moreover, the examiner’s burden of proof in rejecting claims for
nonenablement requires acceptable evidence or reasoning which is
inconsistent with enablement. In re Strahivelitz, 668 F.2d 1229,
1232, 212 USPQ 561, 563 (CCPA 1982).
On this appeal, the examiner has advanced no evidence or
reasoning which adequately supports her nonenablement position.
Instead, it is the examiner’s essential argument that the
appealed claims are unjustifiably broad and should be limited to
the appellant’s “preferred embodiment” (Answer, page 9). We
cannot agree. To demand that the first to disclose shall limit
his claims to what he has found will work or to materials which
meet the guidelines specified for “preferred” materials in a
process such as the one herein involved would not serve the
constitutional purpose of promoting progress in the useful arts.
In re Goffe, 542 F.2d 564, 567, 191 USPQ 429, 431 (CCPA 1976).
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